Ex parte HUBER et al. - Page 5




          Appeal No. 97-0598                                                          
          Application 08/322,670                                                      


          initial burden to establish a reasonable basis to question the              
          enablement provided for the claimed invention.  See In re                   
          Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed.                  
          Cir. 1993) (examiner must provide a reasonable explanation as               
          to why the scope of protection provided by a claim is not                   
          adequately enabled by the disclosure).  A disclosure which                  
          contains a teaching of the manner and process of making and                 
          using an 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 being in compliance with the                   
          enablement requirement of                                                   
          35 U.S.C. § 112, first paragraph, unless there is a reason to               
          doubt the objective truth of the statements contained therein               
          which must be relied on for enabling support.  Assuming that                
          sufficient reason for such doubt exists, a rejection for                    
          failure to teach how to make and/or use will be proper on that              
          basis.  See In re Marzocchi, 439 F.2d 220, 223, 169 USPQ 367,               
          369 (CCPA 1971).  As stated by the court,                                   
               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                 
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