Appeal No. 96-0926
Application No. 07/995,683
In meeting the enablement requirement of 35 U.S.C. § 112,
an application need not teach, and preferably omits, that
which is well-known in the art. Hybritech Inc. v. Monoclonal
Antibodies, Inc., 802 F.2d 1367, 1384, 231 USPQ 81, 94 (Fed.
Cir. 1986). How such a teaching is set forth, whether by the
use of illustrative examples or by broad descriptive
terminology, is of no importance since a specification which
teaches how to make and use the invention in terms which
correspond in scope to the claims must be taken as complying
with the first paragraph of 35 USC § 112 unless there is
reason to doubt the objective truth of the statements relied
upon therein for enabling support. In re Marzocchi, 439 F.2d
220, 223, 169 USPQ 367, 369 (CCPA 1971).
We hold the examiner has failed to discharge his initial
burden of making out a prima facie case of lack of enablement.
Glaring by its absence in the record is any evidence
supporting the examiner's theories for why appellants' claims
are not enabled by their disclosure. We find ample disclosure
in appellant's specification and in the art cited in the
record which establishes that acupressure and hypnosis are
individually well-known therapies for treating debilitating
physiological and psychological disorders. The only basis for
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