Appeal No. 1995-1304
Application No. 07/947,071
DISCUSSION
The examiner argues that appellants' specification is
insufficient to support the scope of claims 1, 3 through 8, 10
through 16, 20 through 23, and 25 through 30. According to
the examiner, the specification does not provide adequate
guidance enabling any person skilled in the art to make
compounds which hydrolytically cleave RNA except for the
compounds enumerated in allowed claims 31 through 33. We
disagree.
As stated in In re Armbruster, 512 F.2d 676, 677-78,
185 USPQ 152, 153 (CCPA 1975) quoting from In re Marzocchi,
439 F.2d 220, 223-24, 169 USPQ 367, 369-70 (CCPA 1971):
As a matter of Patent Office practice, then, 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. . . .
. . . [I]t 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
-4-
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007