Appeal No. 96-1313
Application 08/202,536
Appellants argue that Morgan would not have suggested, to
one of ordinary skill in the art, adding the constituents to
the bath in the order set forth in appellants’ specification
which, appellants’ argue, is necessary for achieving and
maintaining the stability of the bath (brief, page 5).
Regarding this order, appellants’ specification states (page
11, lines 29-32): “Any disclosure which lacks this order of
incorporation would not be enabling, and would likely lead the
ordinary skilled artisan to an unstable bath, i.e., a bath
which exhibits the homogenous reaction.” Appellants state
that a homogenous reaction is a chemical reduction of the
metal ions in solution rather than on the substrate surface
(specification, page 4, lines 27-33).
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
-9-9
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