Appeal No. 1995-3522
Application No. 07/912,973
the specification teachings and support for the claimed
subject matter are in error (reply brief, pages 2-13).
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 with
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