Appeal No. 1996-3318
Application No. 08/287,056
An examiner may reject claims in a patent application on the basis of an alleged failure of
the applicant to comply with the enablement requirement if the examiner can establish by a
preponderance of the evidence that there is reason to doubt the objective truth of the
statements contained in the specification. In re Marzocchi, 439 F.2d 220, 223-34, 169
USPQ 367, 369-70 (CCPA 1970). In our opinion, the examiner has not sustained her
burden for making the enablement rejection for the following reasons.
First, the data in specification Tables II and VII show a decrease in microbe count
following addition of glucose oxidase alone to a starch slurry and a groundwood slurry,
respectively (in Table II, page 6, compare the microbe count for test nos. 1 and 5,
especially at 1 and 3 days; in Table VII, page 11, compare the bacteria count for test nos.
1 and 4, especially at 0 and 5 hours). Second, the claimed process does not require
obtaining and/or maintaining any particular level of microbe content within the industrial
4
process water or slurry for any particular time period. Third, it appears inconsistent for the
examiner to maintain on the one hand that one of ordinary skill in the art would have
recognized (i) that a liquid to which glucose oxidase is being added
4We note that the examiner has not rejected the claimed invention on the basis that an
"industrially significant" reduction of microorganisms in industrial process waters or slurries is required for
utility (see answer, paragraph bridging pages 9-10).
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