Appeal No. 96-0114
Application No. 08/128,279
§ 112, first paragraph, as the specification fails to provide
an enabling disclosure for the claimed invention.2
We reverse.
According to In re Vaeck, 947 F.2d 488, 496 n.23, 20
USPQ2d 1438, 1444-1445, n.23 (Fed. Cir. 1991):
The first paragraph of 112 requires nothing
more than objective enablement. In re
Marzocchi, 439 F.2d 220, 223, 169 USPQ 367,
369 (CCPA 1971). How such a teaching is
set forth, either by the use of
illustrative examples or by broad
terminology, is irrelevant. Id.
Where, as here, appellant’s specification contains a
description of the manner of making and using the invention
corresponding in scope with those of the claims, compliance
with the enablement requirement of the first paragraph of
Section 112 is presumed. Marzocchi, 439 F.2d at 223-224, 169
USPQ at 369-370. It is the examiner’s burden to present
adequate evidence for doubting the objective truth of
2In the Answer, the examiner inadvertently did not
repeat the rejection of claims 12 and 15 through 17 under 35
U.S.C.
§ 112, first paragraph. However, as is apparent from page 2
of the final Office action and appellant’s Brief, claims 12
and 15 through 17 stand rejected under 35 U.S.C. § 112, first
paragraph, "for the reasons set forth in the objection to the
specification."
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