Appeal No. 1996-2088
Application No. 08/082,432
A specification of a patent application is presumed to comply with the enablement requirement
of 35 U.S.C. § 112, first paragraph. An examiner may reject claims in a patent application on the basis
of an alleged failure of the applicant to comply with the enablement requirement if the examiner can
establish by a preponderance of the evidence that there is reason to doubt the objective truth of the
statements contained in the specification. In re Marzocchi, 439 F.2d 220, 223-24, 169 USPQ 367,
369-70 (CCPA 1971). In our opinion, the examiner has not sustained his burden for making the
enablement rejection. The examiner cites no evidence and makes no analysis of the kind which the
Federal Court approved in In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir.
1988) (discussion of factors to be considered in determining whether undue experimentation would be
necessary to justify broad claim). Moreover, the examiner has failed to establish that any essential
step has been omitted from the claimed invention. The mere fact that other steps have been disclosed
in the preferred embodiment does not render each and every step thereof an essential step.
Therefore, the rejection under 35 U.S.C. § 112, first paragraph, is reversed.
II. Obviousness
To establish a prima facie case of obviousness, there must be both some suggestion or
motivation to modify the reference or combine reference teachings and a reasonable expectation of
success. Furthermore, the prior art must teach or suggest all the claim limitations. In re Vaeck, 947
F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991).
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