Appeal No. 96-3923
Application 08/309,790
describing and defining the subject matter
sought to be patented must be taken as in
compliance with the enabling requirement of
the first paragraph of § 112 unless there
is reason to doubt the objective truth of
the statements contained therein which must
be relied on for enabling support.
Here, the examiner has not provided any reasonable line
of reasoning for doubting the objective truth of the
appellants’ statements concerning the disclosed amounts of
irritant and the results they produce. In this regard, it is
well settled that the examiner has the initial burden of
producing reasons that substantiate a rejection based on lack
of enablement. See Marzocchi, 439 F.2d at 224, 169 USPQ at
370 and In re Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ 561,
563 (CCPA 1982). The examiner, however, has failed to satisfy
this burden. Accordingly, we will not sustain the rejection
of claims 15-28 under 35 U.S.C. § 112, first paragraph.
Turning to the rejection of claims 15-28 under 35 U.S.C.
§ 112, second paragraph, the examiner is of the opinion that
these claims are indefinite because "no quantity, strength or
the like of irritant is recited" (answer, page 6). We do not
agree with the examiner’s position. The legal standard for
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