Appeal No. 1998-3301 Page 10
Application No. 08/784,361
(Fed. Cir. 1988), cert. denied, 109 S.Ct. 1954 (1989); In re
Stephens, 529 F.2d 1343, 1345, 188 USPQ 659, 661 (CCPA 1976).
In order to make a rejection, the examiner has the
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
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