Appeal No. 95-1183 Application No. 07/991,693 established that broad language is not offensive to the first paragraph of § 112 unless there is reason to doubt the presumed objective truth of statements contained in the specification disclosure which must be relied on for enabling support. In re Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA 1971). Moreover, the examiner’s burden of proof in rejecting claims for nonenablement requires acceptable evidence or reasoning which is inconsistent with enablement. In re Strahivelitz, 668 F.2d 1229, 1232, 212 USPQ 561, 563 (CCPA 1982). On this appeal, the examiner has advanced no evidence or reasoning which adequately supports her nonenablement position. Instead, it is the examiner’s essential argument that the appealed claims are unjustifiably broad and should be limited to the appellant’s “preferred embodiment” (Answer, page 9). We cannot agree. To demand that the first to disclose shall limit his claims to what he has found will work or to materials which meet the guidelines specified for “preferred” materials in a process such as the one herein involved would not serve the constitutional purpose of promoting progress in the useful arts. In re Goffe, 542 F.2d 564, 567, 191 USPQ 429, 431 (CCPA 1976). 4Page: Previous 1 2 3 4 5 6 7 8 NextLast modified: November 3, 2007