Appeal No. 94-2100
Application 07/902,109
To that end we point out that the specification is presumed
to be "in compliance with the enablement requirement of § 112,
first paragraph, unless there is reason to doubt the objective
truth of the statements contained therein." In re Marzocchi, 439
F.2d 220, 223, 169 USPQ 367, 369 (CCPA 1971). It is well
established that when making a rejection under § 112, the
examiner has the burden of presenting adequate reasons as to why
the specification would not have enabled a person skilled in the
art to make and use the full scope of the claimed invention. In
re Angstadt, 537 F.2d 498, 502, 190 USPQ 214, 217 (CCPA 1976).
Turning to the specification, we find that it states that,
based on the in vitro and in vivo data disclosed therein, the
claimed compositions are
selective for central [nervous system] cholinergic M1
receptors and are able to reverse scopolamine-induced
hyperactivity and to improve scopolamine-induced amnesia in
the radial arm maze in rats. Compounds having this activity
may be useful for treatment of diseases involving
hypofunction of the cortical cholinergic system
[Specification, p. 2, lines 29-33].
Absent reasons or evidence to the contrary, the presumption is
that this teaching, in conjunction with the rest of the
specification which includes the methods of making the claimed
compositions and the assays described in Examples 1 through 13,
is sufficient to satisfy the enablement requirement of 35 U.S.C.
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