Appeal No. 95-3734
Application No. 08/043,620
paragraphs. Having carefully reviewed the examiner's statement
of this rejection, we find no argument, evidence, or reasoning
which would serve to support a conclusion that the appealed
claims do not particularly point out and distinctly claim the
subject matter which appellants regard as their invention.
Accordingly, we summarily reverse the rejection to the extent
that it is predicated on 35 U.S.C. § 112, second paragraph.
Respecting the first paragraph of 35 U.S.C. § 112, the
examiner focuses on the issue of enablement and whether the scope
of protection sought is supported and justified by the
specification disclosure. In this regard, our reviewing court
has made it clear that the PTO must substantiate its rejection
for lack of enablement with reasons. As stated in In re
Armbruster, 512 F.2d 676, 677-78, 185 USPQ 152, 153 (CCPA 1975),
quoting from In re Marzocchi, 169 USPQ 367, 369-70 (CCPA 1971):
[I]t is incumbent upon the Patent Office, whenever a
rejection on this basis is made, to explain why it
doubts the truth or accuracy of any statement in a
supporting disclosure and to back up assertions of its
own with acceptable evidence or reasoning which is
inconsistent with the contested statement.
Here, according to the examiner, the specification lacks adequate
guidelines enabling any person skilled in the art to make and use
the claimed invention throughout its scope. The examiner does
not, however, explain why he doubts the truth or accuracy of any
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