Appeal No. 97-0598
Application 08/322,670
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.
Marzocchi, 439 F.2d at 224, 169 USPQ at 370.
Once the Examiner has established a reasonable basis to
question the enablement provided for the claimed invention,
the burden falls on Appellants to present persuasive
arguments, supported by suitable proofs where necessary, that
one skilled in the art would be able to make and use the
claimed invention using the disclosure as a guide. See In re
Brandstadter, 484 F.2d 1395, 1406, 179 USPQ 286, 294 (CCPA
1973). In making the determination of enablement, the
Examiner shall consider the
original disclosure and all evidence in the record, weighing
evidence that supports enablement against evidence that the 4
4 The appellant may attempt to overcome the examiner's
doubt about enablement by pointing to details in the
disclosure but may not add new matter. The appellant may also
submit factual affidavits under 37 CFR § 1.132 or cite
references to show what one skilled in the art knew at the
6
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