Appeal No. 2001-2497 Page 6
Application No. 08/855,744
Armbruster, 512 F.2d 676, 678, 185 USPQ 152, 153 (CCPA 1975). If the
specification “contains a teaching of the manner and process of making and
using the invention in terms which correspond in scope to those used in
describing and defining the subject matter sought to be patented[, it] must be
taken as in compliance with the enabling requirement of the first paragraph of
§ 112 unless there is reason to doubt the objective truth of the statements
contained therein which must be relied on for enabling support.” In re Marzocchi,
439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA 1971), emphasis in original.
Further, a conclusion of nonenablement must be supported by evidence or
scientific reasoning. See Armbruster, 512 F.2d at 677, 185 USPQ at 153 (“[T]he
Patent and Trademark Office must substantiate its rejection for lack of
enablement with reasons.” (emphasis in original)). See also Marzocchi, 439 F.2d
at 224, 169 USPQ at 370 (“[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.”).
In this case, the examiner has provided no Wands-based analysis to
support the conclusion of nonenablement and has pointed to no evidence in the
record to support the assertion that the claimed method is likely to be inoperative.
With regard to the asserted requirement for undue experimentation, we note that
first paragraph, for the reasons previously set forth on page 4, line 28 to page 5 of [Paper No. 5]”
(emphasis added).
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