Appeal No. 97-2650 Page 8
Application No. 08/489,257
which must be relied on for enabling support. Assuming that
sufficient reason for such doubt exists, a rejection for failure
to teach how to make and/or use will be proper on that basis.
See In re Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA
1971). As stated by the court, "it 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. Otherwise, there would be no need for the
applicant to go to the trouble and expense of supporting his
presumptively accurate disclosure." In re Marzocchi, 439 F.2d
at 224, 169 USPQ at 370.
Thus, the threshold step in resolving this issue as set
forth supra is to determine whether the examiner has met his
burden of proof by advancing acceptable reasoning inconsistent
with enablement. This the examiner has not done.
While the examiner is correct that the drawings do not
illustrate an aperture to allow the passage of the solenoid bolt
27 through the chain guide 32, the original specification (page
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