Ex parte LIN et al. - Page 3




             Appeal No. 96-1055                                                                                   
             Application 07/727,331                                                                               





                    Regarding enablement, a 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.                                             
                    Appellants provide on pages 5-9 of their specification                                        
             guidance as to the dosages and forms for administering the                                           
             compound recited in their claims.  The examiner dismisses this                                       
             guidance as being boilerplate guidance which is minimal and                                          

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