Appeal No. 94-1911
Application 07/662,735
terminology, is irrelevant.” In re Vaeck, 947 F.2d 488, 496
n.23, 20 USPQ2d 1438, 1444-1445 n.23 (Fed. Cir. 1991).
Accordingly, In re Marzocchi, 439 F.2d 220, 169 USPQ 367 (CCPA
1971) teaches at 223-224, 169 USPQ at 369-370, that statements in
the specification shall be taken as true and will suffice for
objective enablement under 35 U.S.C. § 112, first paragraph,
unless the examiner provides sufficient reasons to doubt the
objective truth of the statements. A finding that the examples
in the specification are not commensurate in scope with the
scope of the subject matter claimed does not itself satisfy the
examiner’s burden to show that the specification as a whole would
not have enabled one skilled in the art to make and use the
claimed invention. The examiner’s doubts why the specification
as a whole would not have been enabling to a person skilled in
the art must be explained and backed by evidence. In re
Marzocchi, 439 F.2d at 224, 169 USPQ at 370.
What have we here? Here, the examiner emphasizes first that
appellants’ specification would not have enabled persons skilled
in the art to recombinantly modify genes of microorganisms (1) to
produce an enzyme operable to degrade a target organic material
present in a mixed microbiologically competitive environment
while utilizing a growth substrate which is not normally utilized
by organisms indigenous to the mixed microbiologically
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