Ex parte SHINOZAKI et al. - Page 4




          Appeal No. 1997-3655                                                        
          Application No. 08/351,136                                                  

          concludes that “the facts of this case are such that if the                 
          claims in fact cover substantially or radically different                   
          structures, then these claims are broader than permitted by                 
          the first paragraph of                                                      
          35 U.S.C. § 112" (second supplemental examiner’s answer, page               
          1).  Further in this regard, it is the examiner’s contention                
          that, “in a complex technology such as this when compositions               
          are described in terms of partial structure and properties, if              
          the claims cover compositions substantially different in                    
          structure and when appellants can, without burden, provide                  
          this information but refuse to do so, the Examiner can                      
          properly assume that the claims do cover subject matter                     
          substantially beyond the enablement” (answer, page 16).                     
               It is apparent from the record in general and the above                
          quotations in particular that the rejection before us is                    
          premised upon suspicions and assumptions by the examiner.                   
          However, suspicions and assumptions do not constitute                       
          acceptable reasoning inconsistent with enablement.  This is                 
          particularly so in this case where these suspicions and                     
          assumptions, aside from being  unsupported by probative                     
          evidence, are vague in that they relate to claim coverage of                

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