Appeal No. 1998-2392
Application No. 08/338,917
viewpoints of appellants and the examiner. As a consequence
of our review, we make the determination which follows.
We reverse the rejection of claims 1 through 30
under 35 U.S.C. § 112, first paragraph.
The text of the rejection before us (answer, pages 3
and 4) reveals that the examiner is questioning whether the
claimed invention is based upon an underlying disclosure that
is enabling. To be enabling, a disclosure must contain a
description that enables those skilled in the art to make and
use a claimed invention, without undue experimentation. See
Enzo Biochem, Inc. v. Calgene Inc., 188 F.3d 1362, 1371,
52 USPQ2d 1129, 1135 (Fed. Cir. 1999).
An examiner has the initial burden of producing
reasons that substantiate a rejection based on lack of enable-
ment and must keep in mind that a specification must be taken
as in compliance with the enabling requirement of 35 U.S.C. §
112, unless there is reason to doubt the objective truth of
the statements contained therein. See In re Marzocchi, 439
F.2d 220, 223, 169 USPQ 367, 369 (CCPA 1971).
In the present case, it is apparent to us that the
examiner has not satisfied the requisite burden of proof to
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