Appeal No. 2006-1820
Application No. 08/889,440
filed claim is its own written description. In re Wertheim, 541 F.2d 257, 264-5, 191 USPQ 90,
98 (CCPA 1976).
With regard to the enablement requirement of 35 U.S.C. § 112, first paragraph, as a
matter of Patent and Trademark Office practice, a specification disclosure which 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 must
be taken as in compliance with the enabling requirement of the first paragraph of 35 U.S.C. §
112 unless there is reason to doubt the objective truth of the statements contained therein which
must be relied on for enabling support. Assuming that sufficient reason for such doubt does
exist, a rejection for failure to teach how to make and/or use will be proper on that basis; such a
rejection can be overcome by suitable proofs indicating that the teaching contained in the
specification is truly enabling, In re Marzucchi, 439 F.2d 220, 169 USPQ 367 (CCPA 1971); In
re Sichert, 566 F.2d 1154, 196 USPQ 209 (CCPA 1977).
When a rejection is made on the basis that the disclosure lacks enablement, it is
incumbent upon the examiner to explain why he/she doubts the truth or accuracy of any
statement in a supporting disclosure and to back up assertions with acceptable evidence or
reasoning which is inconsistent with the contested statement. The examiner has not advanced
any such evidence or an acceptable line of reasoning inconsistent with enablement and,
therefore, has not sustained his/her burden. That is, the examiner has advanced no evidence that
would indicate that the skilled artisan would not have known how to obtain adsorbate particles
and substrate particles and /or how to obtain particles formed of these particles, without undue
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