Appeal No. 1995-3249
Application No. 07/670,644
DISCUSSION
The rejections under 35 U.S.C. 112, 1st paragraph
There are two rejections of all the claims under the first paragraph of 35 U.S.C.
§ 112. See the Answer, pages 6 through 8. On the surface, rejection I appears to be
based on the written description requirement of the statute, as well as the requirement for
an enabling disclosure. On closer inspection, however, we are unable to identify reasoning
which would explain why the specification does not provide adequate written descriptive
support for the claimed invention. All of the concerns raised by the examiner actually
appear to have a bearing on whether or not the claims are based on an enabling
disclosure. Rejection II is based solely on the requirement for an enabling disclosure.
It is well settled that the examiner bears the initial burden of explaining why one
skilled in the art would reasonably doubt the objective truth of statements relied on for
enabling support. In re Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA 1971).
Having carefully reviewed the specification, including the working examples, in light of the
examiner’s commentary on pages 6 through 8 and 10 through 26, we hold that the
examiner has not set forth a reasonable basis for questioning the enablement of the claims
on appeal.
On reflection, we believe that the principal flaw in the examiner’s reasoning is a
failure to adequately acknowledge the level of skill in the art at the time of appellants’
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