Appeal No. 94-3878
Application 07/740,529
§ 112 unless there is reason to doubt the objective truth of
statements contained therein. Fiers v. Revel, 984 F.2d 1164,
1171-72, 25 USPQ2d 1601, 1607 (Fed. Cir. 1993). It is incumbent
upon the examiner to explain why he doubts the truth or accuracy
of any statement in a supporting disclosure and to back up his
assertions with acceptable evidence or reasoning which is incon-
sistent with the contested statement. In re Marzocchi, 439 F.2d
220, 224, 169 USPQ 367, 370 (CCPA 1971). That some experimen-
tation is necessary does not preclude enablement; the amount of
experimentation, however, must not be unduly extensive. Atlas
Powder Co. v. E.I. Du Pont de Nemours & Co., 750 F.2d 1569, 1576,
224 USPQ 409, 413 (Fed. Cir. 1989). The fact that a claim
embraces some combinations which are inoperative does not
necessarily make the claim inoperative so long as the number of
inoperative embodiments does not become significant. Atlas Powder
Co. v. E.I. Du Pont de Nemours & Co., supra.
Here, the examiner contends that the disclosure is enabled
only for claims limited to metal complexes substituted with a
delocalized B-bonding group, i.e., where m = 1 in the formula
depicted in claim 1. The examiner urges that it would require
undue experimentation to ascertain which of appellant's metal
complexes lacking a delocalized B-bonding group, i.e., where
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