Appeal No. 95-3959
Application 08/051,492
about 3 to about 5% carbohydrate, 5 to about 10% fat, and optionally,
100% or greater of the NRC requirements for minerals and vitamins, 0.1
to 3.0% amino acids, and 0.11 to 5.0% fatty acids. Water content of the
emulsion should be in the range of about 65-85% by weight.
Here, appellant claims his invention as broadly as it is disclosed in the
supporting specification. Under these circumstances the burden is upon the examiner
in the first instance to provide reasons why one would doubt the objective truth of the
enabling statement set forth in the specification. In re Marzocchi, 439 F.2d 220, 223,
169 USPQ 367, 369 (CCPA 1971). The first statement is so open-ended as to be
essentially meaningless. Such a statement does not meet the examiner’s burden of
providing reasons why the claimed invention cannot be practiced by one skilled in the
art. Nor does the second statement explain why one skilled in the art would not be able
to make and use the claimed invention. Rather, the second statement appears to
reflect the examiner’s belief that appellant must limit the claims to the exemplified
compositions or the preferred embodiments disclosed in the supporting specification.
This is improper. See In re Anderson, 471 F.2d 1237, 1240-41, 176 USPQ 331, 333
(CCPA 1973)(It is improper to require an appellant to limit his claims to specific
examples or preferred embodiments when there is clear disclosure of a broader
invention).
The rejections under 35 U.S.C. § 112, first paragraph, are reversed.
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