Appeal No. 2005-2239
Application No. 10/448,905
As those skilled in the art will appreciate, Appellants’
specification indicates the various conditions, including high
and low flow rates can be used to carry out their plasma
etching. Since Appellants’ specification contains a written
description of the manner of making and using gas plasma
corresponding with the scope of the claims on appeal, compliance
with the enablement requirement is presumed. Marzocchi, 439
F.2d at 223-24, 169 USPQ at 369-70.
It is the Examiner’s burden to present adequate basis for
doubting the objective truth of Appellants’ statements in the
specification, i.e., to provide scientific reasoning and/or
evidence as to why one of ordinary skill in the art would not
have been able to make and use the full scope of the subject
matter claimed based on the written description of the invention
in the specification without undue experimentation. Id. On
this record, however, the Examiner has not carried this burden.
The Examiner has not proffered any scientific reasoning and/or
evidence to doubt the accuracy of Appellants’ statements in the
specification. (See Answer pp. 3-4). Accordingly, we are
constrained to reverse the Examiner’s 35 U.S.C. § 112, first
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