Appeal No. 1997-2193
Application 07/986,648
Marzocchi, 439 F.2d at 223, 169 USPQ at 369. In meeting the
enablement requirement, an application need not teach, and
preferably omits, that which is well-known in the art.
Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367,
1384, 231 USPQ 81, 94 (Fed. Cir. 1986).
We recognize that the enablement requirement of the first
paragraph of 35 U.S.C. § 112 requires that there be some
reasonable correlation between the scope of the claims and the
scope of enablement described in the specification. In re
Fisher, 427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970).
However, how such a teaching is set forth, whether by the use
of illustrative examples or by broad descriptive terminology,
is of no importance since a specification which teaches how to
make and use the invention in terms which correspond in scope
to the claims must be taken as complying with the first
paragraph of 35 U.S.C. § 112 unless there is reason to doubt
the objective truth of the statements relied upon therein for
enabling support. Marzocchi at 439 F.2d 223, 169 USPQ 369.
Based on this record, the examiner has failed to present
evidence establishing that appellants' disclosure is
insufficient compared to the scope of their claims. The
examiner has presented only conjecture and no objective
9
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007