Appeal No. 2002-0377 Page 5
Application No. 09/123,908
USPQ2d 1217, 1223 (Fed. Cir. 1988), cert. denied, 109 S.Ct. 1954 (1989); In re
Stephens, 529 F.2d 1343, 1345, 188 USPQ 659, 661 (CCPA 1976).
As to the examiner's rejection based on the enablement requirement, it is our
view that the examiner has not met the initial burden to establish a reasonable basis to
question the enablement provided for the claimed invention.3 A disclosure which
contains a teaching of the manner and process of making and 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.4
In applying the above-noted test for enablement, factors which must be
considered by the examiner in determining whether a disclosure would require undue
3 See In re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993) (examiner
must provide a reasonable explanation as to why the scope of protection provided by a claim is not
adequately enabled by the disclosure).
4 As stated by the court in In re Marzocchi, 439 F.2d 220, 223, 224, 169 USPQ 367, 370 (CCPA
1971)
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.
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