Appeal No. 1995-3047
Application No. 07/805,729
in a supporting disclosure and to back up assertions of its own with
acceptable evidence or reasoning which is inconsistent with the contested
statement.
The statement of rejection in the Examiner's Answer, page 6, amounts to a mere
conclusion, unsupported by facts, that claims 1 through 24 are based on a non-enabling
disclosure. The examiner has not complied with the appropriate legal standard for
rejecting claims based on the enablement requirement of 35 U.S.C. § 112, first paragraph,
and has not established a prima facie case of a non-enablement.
The rejection of claims 1 through 24 under 35 U.S.C. § 112, first paragraph, is
reversed.
The examiner also argues that method claims 22 through 24 are incomplete for
failing to recite a "host in need thereof". It follows, according to the examiner, that these
claims do not comply with 35 U.S.C. § 112, first or second paragraphs. See the
Examiner's Answer, page 6, lines 13 through 25. Again, the flaw with this rejection is a
failure to set forth reasons or evidence supporting the examiner's position. The mere
conclusion that claims 22 through 24 do not comply with 35 U.S.C. § 112, first and second
paragraphs, is not enough. Simply stated, the examiner has not set forth adequate
reasons or evidence which would establish a prima facie case of indefiniteness or lack of
enablement for these claims.
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007