Appeal No. 2003-0208 Page 7
Application No. 08/578,996
that sufficient reason for such doubt exists, a rejection for failure to teach how to make
and/or use will be proper on that basis. See In re Marzocchi, 439 F.2d 220, 223, 169
USPQ 367, 369 (CCPA 1971). As stated by the court,
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.
In re Marzocchi, 439 F.2d at 224, 169 USPQ at 370.
In this case, the examiner has not ascertained that one skilled in the art could
not make and use the claimed invention from the disclosure coupled with information
known in the art without undue experimentation. In fact, the examiner has not even
weighed the factors to be considered in determining whether a disclosure would require
undue experimentation.6
For the reasons set forth above, the decision of the examiner to reject claims 3,
6, 8 and 10 under 35 U.S.C. § 112, first paragraph, is reversed.
6 These factors include (1) the quantity of experimentation necessary, (2) the amount of direction
or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention,
(5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability
of the art, and (8) the breadth of the claims. See In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404
(Fed. Cir. 1988) citing Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. & Int. 1986).
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