Appeal No. 94-3359
Application 07/941,566
need not teach, and preferably omits, that which is well-known in
the art. Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d
1367, 1384, 231 USPQ 81, 94 (Fed. Cir. 1986). How such a
teaching is set forth, whether by the use of illustrative
examples or by broad descriptive terminology, is of no importance
since a specification which teaches how to make and use the
invention in terms which correspond in scope to the claims must
be taken as complying with the first paragraph of 35 USC 112
unless there is reason to doubt the objective truth of the
statements relied upon therein for enabling support. Marzocchi
at 439 F.2d 223, 169 USPQ 369.
We hold the examiner has failed to discharge his
initial burden of making out a prima facie case of lack of
enablement. Glaring by its absence in the record is any evidence
supporting the examiner's theories for why appellants' claims are
not enabled by their disclosure. In the absence of any evidence
and in light of the voluminous prior art of record, we are not
persuaded that anything more than routine experimentation would
have been required for the skilled routineer to select, make and
use appropriate polymers within the subject matter claimed by
appellants.
The examiner's separate rejection of the claims under
35 USC 112, first paragraph, as being non-enabled is reversed.
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