Appeal No. 96-0009
Application 08/104,417
Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA 1971):
[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.
When making a rejection under 35 U.S.C. § 101, an
examiner must do more than merely question operability. In re
Gaubert, 524 F.2d 1222, 1224-25, 187 USPQ 664, 666 (CCPA
1975). The examiner “must set forth factual reasons which
would lead one skilled in the art to question the objective
truth of the statement of operability” (id.).
In the present case, the examiner states that appellants
claim a mechanism of chemical reactions within the body which
are speculative and that appellants’ method for inhibiting
transport of a neurotransmitter away from a synapse is on its
face unbelievable (answer, page 4), but the examiner provides
no factual basis for these assertions.
The examiner argues that appellants have not established
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