Appeal No. 95-3400
Application 08/179,793
We shall not sustain this rejection essentially for the
reasons stated in appellants’ brief.
It is incumbent upon the examiner, if he has any doubts as
to enablement or utility of a claimed invention, to support his
assertions with objective factual evidence or cogent technical
reasoning. In re Armbruster, 512 F.2d 676, 677-78, 185 USPQ 152,
153 (CCPA 1975); In re Marzocchi, 439 F.2d 220, 223, 169 USPQ
367, 369 (CCPA 1971). The examiner’s answer is totally lacking
in this regard. Indeed, the examiner’s assertions here are
entirely speculative in nature. Therefore, we conclude that the
examiner has failed to establish a prima facie case of
nonenablement or lack of utility.
Moreover, we agree with appellant that the disclosure in
their specification is sufficient to satisfy the first paragraph
requirements of 35 U.S.C. § 112. Specifically, the specification
includes a number of working examples and a clear statement on
page 8 of utility as follows:
The poly(thioether ether)s and hydroxy-terminated
poly(thioether ether)s of the invention contain no
thermally sensitive S-S linkages or hydrolytically
unstable -O-CH -O- groups. This feature makes the
2
polymers of the invention attractive intermediates for
formulating polyesters, polycarbonates, and
polyurethanes, especially those applications for which
thermal and hydrolytic stability are important
concerns.
3
Page: Previous 1 2 3 4 5 6 Next
Last modified: November 3, 2007