Appeal No. 2000-1473 Page 5
Application No. 08/765,169
In making a rejection on the ground of nonenablement, 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 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
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