Appeal No. 96-1315
Application 08/293,611
The first paragraph of 35 U.S.C. § 112 requires nothing more than objective
enablement. How such a teaching is set forth, either by the use of illustrative examples or
by broad 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 U.S.C. § 112 unless there is reason to
doubt the objective truth of the statements relied upon for enabling support. In re Brana, 51
F.3d 1560, 1566, 34 USPQ2d 1436, 1441 (Fed. Cir. 1995); In re Marzocchi, 439 F.2d
220, 223, 169 USPQ 367, 369 (CCPA 1971). The statute does not require that a
specification convince persons skilled in the art that the assertions therein are correct. In
re Robins, 429 F.2d 452, 457, 166 USPQ 552, 556 (CCPA 1970). It is necessary that the
examiner supply either evidence or reasoning as to why the invention cannot be practiced
as broadly as it is claimed. In re Bowen, 492 F.2d 859, 862-63, 181 USPQ 48, 51 (CCPA
1974).
Herein the examiner posits that the use of liquid hydrocarbons having a molecular
weight of 142 to 422 does not follow from the singular example of a hydrocarbon having an
average molecular weight of 272. The examiner reasons that “[T]he viscosity and
therefore the flow properties of the liquid hydrocarbon changes as its molecular weight
increases.” However, the examiner has not provided any evidence or reasoning to
establish that (1) this is an unpredictable art and undue experimentation is required to
3
Page: Previous 1 2 3 4 5 Next
Last modified: November 3, 2007