Ex parte DISCHLER - Page 8




          Appeal No. 1997-0529                                       Page 8           
          Application No. 08/573,884                                                  


          using an invention in terms which correspond in scope to those              
          used in describing and defining the subject matter sought to                
          be patented must be taken as being in compliance with the                   
          enablement requirement of                                                   
          35 U.S.C. § 112, first paragraph, unless there is a reason to               
          doubt the objective truth of the statements contained therein               
          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.                          


               Once the examiner has established a reasonable basis to                
          question the enablement provided for the claimed invention,                 
          the burden falls on the appellant to present persuasive                     







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