Appeal No. 95-3400 Application 08/179,793 We shall not sustain this rejection essentially for the reasons stated in appellants’ brief. It is incumbent upon the examiner, if he has any doubts as to enablement or utility of a claimed invention, to support his assertions with objective factual evidence or cogent technical reasoning. In re Armbruster, 512 F.2d 676, 677-78, 185 USPQ 152, 153 (CCPA 1975); In re Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA 1971). The examiner’s answer is totally lacking in this regard. Indeed, the examiner’s assertions here are entirely speculative in nature. Therefore, we conclude that the examiner has failed to establish a prima facie case of nonenablement or lack of utility. Moreover, we agree with appellant that the disclosure in their specification is sufficient to satisfy the first paragraph requirements of 35 U.S.C. § 112. Specifically, the specification includes a number of working examples and a clear statement on page 8 of utility as follows: The poly(thioether ether)s and hydroxy-terminated poly(thioether ether)s of the invention contain no thermally sensitive S-S linkages or hydrolytically unstable -O-CH -O- groups. This feature makes the 2 polymers of the invention attractive intermediates for formulating polyesters, polycarbonates, and polyurethanes, especially those applications for which thermal and hydrolytic stability are important concerns. 3Page: Previous 1 2 3 4 5 6 NextLast modified: November 3, 2007