Appeal No. 96-1313
Application 08/202,536
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.
In accord with Marzocchi, the order set forth in
appellants’ specification of combining the ingredients of
appellants’ bath is presumed to be enabling. However,
appellants’ statement that other orders of combination likely
would result in instability is not directed toward appellants’
invention but, rather, pertains to methods other than that of
appellants. There is no presumption that appellants’
statements in their specification regarding other methods are
correct. For this reason and because 1) Morgan does not
indicate that the disclosed baths are unstable in the absence
of a thickener, and 2) appellants provide no evidence or sound
technical reasoning as to why the order recited in their
specification of adding the components of their bath is
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