Appeal No. 95-0808
Application 08/048,866
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. . . .
. . . .
. . . it is incumbent upon the Patent Office,
whenever a rejection on this basis is made, to
explain why it doubts the truth or accuracy of any
statement in a supporting disclosure and to back up
assertions of its own with acceptable evidence or
reasoning which is inconsistent with the contested
statement. Otherwise, there would be no need for
the applicant to go to the trouble and expense of
supporting his presumptively accurate disclosure.
The examiner argues that “organic radical” in appellants’
claim 1 encompasses an infinite number of species which are
beyond the scope of the invention and encompasses an enormous
number of compounds which would not be expected to be useful
(answer, pages 3 and 5). The examiner, however, does not
provide the required evidence or reasoning in support of this
assertion. Consequently, the examiner’s argument is not
convincing. We note that a claim is not indefinite merely
because it is broad. See In re Gardner, 427 F.2d 786, 788,
166 USPQ 138, 140 (CCPA 1970); In re Borkowski, 422 F.2d 904,
-13-13
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007