Appeal No. 1997-2198
Application 08/262,953
[A] specification disclosure which contains a
teaching of the manner and process of making and
using the 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 in compliance with the enabling requirement of
the first paragraph of § 112 unless there is reason
to doubt the objective truth of the statements
contained therein which must be relied on for
enabling support. . . .
. . . .
. . . 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.
The examiner argues that “a method for treating alopecia
areata or male pattern baldness”, recited in the preambles of
claims 13 and 24, encompasses alopecia areata in general,
alopecia totalis, alopecia universalis and male pattern
baldness, and that appellant’s specification does not enable
treating all of these conditions (answer, pages 8 and 10).
The examiner, however, does not explain why there is reason to
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