Appeal No. 97-0225
Application No. 08/357,789
We now consider the examiner’s rejection of claims 1,6,8,
and 21 through 26 under 35 U.S.C. § 112, first paragraph, as
lacking an enabling disclosure in the specification for the
subject matter claimed. As stated in In re Vaeck, 947 F.2d
488, 496 n. 23, 20 USPQ2d 1438, 1444-1445 (Fed. Cir. 1991):
The first paragraph of 35 U.S.C. § 112
requires nothing more than objective enablement.
In re Marzocchi, 439 F.2d 200, 223, 169 USPQ
367, 369 (CCPA 1971). How such a teaching is
set forth, either by use of illustrative
examples or by broad terminology, is irrelevant.
Id.
Where applicants’ specification contains a description of the
manner of making and using the claimed invention in terms
corresponding in scope with those of the claims, compliance
with the enablement requirement of the first paragraph of 35
U.S.C.
§ 112 is presumed. In re Marzocchi, 439 F.2d at 223-224, 169
USPQ at 369-370. It is the examiner’s burden to present
adequate reasons to doubt the objective truth of appellants’
statements in the specification. Id. In presenting adequate
reasons, the examiner must take into consideration, inter
alia, the amount of guidance or direction presented in the
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