Ex parte STEWART et al. - Page 9




          Appeal No. 96-2833                                                          
          Application 08/202,772                                                      


          encapsulate the recited cleaning aids with a poly(vinyl                     
          alcohol) hydrogel.                                                          
               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.                      
               In support of his argument, the examiner relies (answer,               
          page 5) upon column 3, lines 44-46 of Fox.  This reference                  
          discloses that “[g]enerally, synthetic hydrogels are formed by              
          polymerizing a hydrophilic monomer in an aqueous solution                   

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