Appeal No. 1995-3047
Application No. 07/805,729
under 35 U.S.C. § 103 as unpatentable over Marquez.
On consideration of the record, we shall not sustain these rejections.
DISCUSSION
In rejecting claims 1 through 24 under 35 U.S.C. § 112, first paragraph, the
examiner argues that appellants' disclosure is enabling "only for claims limited in
accordance with the specific embodiments"; that the terms "virus" and "viral infection" in
claims 6, 13, 20, and 21 through 23 are too broad, i.e., not supported by an enabling
disclosure; and that the term "mammal" in claims 6, 13 and 20 is too broad and not
supported by an enabling disclosure. However, in the statement of rejection (Examiner's
Answer, page 6), the examiner does not provide adequate reasons or evidence to support
his position. We invite attention to the following statement in In re Armbruster, 512 F.2d
676, 677, 185 USPQ 152, 153 (CCPA 1975) quoting from In re Marzocchi, 439 F.2d 220,
224, 169 USPQ 367, 369-370 (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. . .
.
. . . 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
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