Appeal No. 95-3189 Page 5 Application No. 08/055,403 electrophoresis device including a removable, portable, and interchangeable capillary cartridge (brief, pages 3-8). With respect to enablement, the 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 statement. Otherwise, there would be no need for the applicant to go to the trouble and expense of supporting his presumptively accurate disclosure. In addition, an analysis of whether the claims under appeal are supported by an enabling disclosure requires a determination of whether one skilled in the art could make and use the claimed invention from the disclosure coupled withPage: Previous 1 2 3 4 5 6 7 8 9 10 NextLast modified: November 3, 2007