Appeal No. 1997-2182
Application 08/137,443
prima facie case of lack of enablement. In re Strahilevitz,
668 F.2d 1229, 1232, 212 USPQ 561, 563 (CCPA 1982); In re
Wertheim, 541 F.2d 257, 263, 191 USPQ 90, 97 (CCPA 1976); In
re Armbruster, 512 F.2d 676, 677, 678, 185 USPQ 152, 153 (CCPA
1975); In re Marzocchi, 439 F.2d 220, 224, 169 USPQ 367, 370
(CCPA 1971). Moreover, in determining whether or not a
disclosure is enabling, it has been consistently held that the
enablement requirement of the first paragraph of 35 U.S.C. §
112 requires nothing more than objective enablement. In re
Marzocchi, 439 F.2d at 223, 169 USPQ at 369. In meeting the
enablement requirement, an application need not teach, and
preferably omits, that which is well-known in the art.
Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367,
1384, 231 USPQ 81, 94 (Fed. Cir. 1986).
How such a teaching is set forth, whether by the use of
illustrative examples or by broad descriptive terminology, is
of no importance since a specification which teaches how to
make and use the invention in terms which correspond in scope
to the claims must be taken as complying with the first
paragraph of 35 U.S.C. § 112 unless there is reason to doubt
the objective truth of the statements relied upon therein for
enabling support. Marzocchi at 439 F.2d 223, 169 USPQ 369. A
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