Appeal No. 94-2504
Application 07/963,676
3. Discussion
We reverse the examiner’s FINAL rejection of Claims 1 and
11-16 under 35 U.S.C. § 112, first paragraph. Appellants
filed their NOTICE OF APPEAL under 35 U.S.C. § 134 on August
13, 1993 (Paper No. 9) after having had Claims 1 and 11-16
twice rejected because “‘[a] cell membrane permeant calcium
buffer’ is broader than the specific supporting disclosure.
It is also broader than the elected invention.” See again the
examiner’s first office action mailed February 5, 1993 and
FINAL office action mailed
May 13, 1993.
In re Marzocchi, 439 F.2d 220, 169 USPQ 367 (CCPA 1971)
teaches at 223, 169 USPQ 369:
As a matter of Patent Office practice, then, 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 § 112 unless there is reason to
doubt
the objective truth of the statements contained therein
which must be relied on for enabling support.
Moreover, Marzocchi adds at 224, 169 USPQ at 370:
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