Appeal No. 95-2896 Page 7
Application No. 07/977,771
applicant 'believes' that a diamond film will be formed..."
(answer, page 3) rather than teaching that "the invention does
preform [sic, perform] as expected" (answer, page 3).
Furthermore, the examiner urges that the Prins and Narayan
references "... both teach carbon diffuse [sic] in an upwards
motion, not downwards..." (answer, page 3) as allegedly called
for by the claimed invention herein.
With respect to enablement and as noted by appellant
(brief, page 6), a predecessor of our appellate reviewing
court stated in In re Marzocchi, 439 F.2d 220, 223-24, 169
USPQ 367, 369-70 (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. . . .
. . . .
. . . 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
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