Appeal No. 1997-0529 Page 8
Application No. 08/573,884
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.
Once the examiner has established a reasonable basis to
question the enablement provided for the claimed invention,
the burden falls on the appellant to present persuasive
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