Appeal No. 98-1563 Page 15
Application No. 08/469,198
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 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 re Marzocchi, 439 F.2d at 224, 169 USPQ at 370.
Page: Previous 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 Next
Last modified: November 3, 2007