Appeal No. 96-0088
Application No. 08/038,426
of non-noble metal. We disagree with the examiner’s position.
We previously found in the rejection under the second
paragraph of § 112 that appellants have reasonable basis for
stating that rhenium is not a noble metal. Hence, appellants
properly conclude that rhenium constitutes a non-noble metal
within the scope of the disclosed invention. Moreover,
appellants have exemplified how to make and use the invention
with rhenium. See specification pages 17 and 18. Since the
specification disclosure contains a teaching of the process of
making and using the invention, it must be taken as being in
compliance with the first paragraph of 35 U.S.C. § 112. In re
Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA 1971).
Based upon the above consideration, the examiner has not met
her burden of showing lack of enablement. Accordingly, the
rejection of claims 3, 19, 23 and 25 under the first paragraph
of 35 U.S.C. § 112 is reversed.
B. The rejections under 35 U.S.C. § 102 (b)
In accordance with 37 CFR § 192(c)(5) (1994), with
respect to each of the rejections under 35 U.S.C. § 102(b),
the additive claims and the process claims will be separately
considered with each set of said additive claims and each set
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