Appeal No. 95-1484
Application 08/070,650
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.”) The PTO has issued two patents with
claimed subject matter defined by claim language substantially
the same as that in Claims 57, 64, and 68 on appeal, which are
supported by substantially the same specification as supports
the claims presently on appeal. Presumably, then, this
specification would also have enabled persons skilled in the
art to make and use the full scope of the subject matter
defined by Claims 57, 64-66, and 68.
Under the circumstances, the examiner has not met his
initial burden to show unpatentability under the first
paragraph of § 112. Absent other, more clear and convincing
evidence in support of a holding contrary to that previously
made by the PTO that a substantially identical specification
would have enabled persons skilled in the art to make and use
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