Appeal No. 1997-0186
Application No. 08/314,568
Claims 1-4, 6-14 and 16-22 are rejected under 35 U.S.C.
§ 112, first paragraph, as being based on a non-enabling
disclosure. Specifically, the examiner maintains that the
disclosure is enabling only for claims limited to the intended
alkoxy silane compounds set forth in the specification and,
for example, in claim 5 (Answer, p. 4).
Appellants argue that (Brief, pp. 5-6):
In setting forth the instant rejection based upon
alleged non-enablement, the Examiner has merely
contended that disclosure is only enabling for
claims limited to the intended alkoxy silane
compounds as set forth in the specification and, for
example, in Claim 5 without setting forth any
reasoning or evidence in support thereof. This is
clearly improper, to adequately support a rejection
under the first paragraph of § 112, since, as
required by the mandate of In re Marzocchi & Horton,
169 U.S.P.Q. 367 (C.C.P.A. 1971) and In re Mayhew,
179 U.S.P.Q. 42 (C.C.P.A. 1973), such reasoning or
evidence is required.
In response, the examiner takes the position that no
reasoning or evidence in support of the rejection is
necessary. See Answer, p. 10. We disagree. As correctly
pointed out by appellants, the Court in In re Marzocchi, 439
F.2d 220, 224, 169 USPQ 367, 370 (CCPA 1971), explains:
[I]t is incumbent upon the Patent Office, whenever a
rejection on this basis [(35 U.S.C. § 112, first
paragraph, enablement)] is made, to explain why it
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