Appeal No. 97-0226
Application No. 08/441,965
We now consider the examiner’s rejection of claims 9
through 11 and 16 through 19 under 35 U.S.C. § 112, first
paragraph, as lacking an enabling disclosure in the
specification for the subject matter claimed. As stated in In
re Vaeck, 947 F.2d 488, 496 n. 23, 20 USPQ2d 1438, 1444-1445
(Fed. Cir. 1991):
The first paragraph of 35 U.S.C. § 112 requires
nothing more than objective enablement. In re
Marzocchi, 439 F.2d 200, 223, 169 USPQ 367, 369
(CCPA 1971). How such a teaching is set forth,
either by use of illustrative examples or by broad
terminology, is irrelevant. Id.
Where applicants’ specification contains a description of the
manner of making and using the claimed invention in terms
corresponding in scope with those of the claims, compliance
with the enablement requirement of the first paragraph of 35
U.S.C.
§ 112 is presumed. In re Marzocchi, 439 F.2d at 223-224, 169
USPQ at 369-370. It is the examiner’s burden to present
adequate reasons to doubt the objective truth of appellants’
statements in the specification. Id. In presenting adequate
reasons, the examiner must take into consideration, inter
alia, the amount of guidance or direction presented in the
8
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