Appeal No. 1998-0138
Application 08/381,809
objective truth of the statements contained therein which must
be relied on for enabling support.
In re Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA 1971). It follows that the
examiner has the initial burden of challenging a presumptively correct assertions in the disclosure.
Marzocchi, 439 F.2d at 224, 169 USPQ at 370. It is incumbent upon the examiner, whenever a
rejection on this basis is made, to explain why he doubts the truth or accuracy of any statement in a
supporting disclosure and to back up assertions of his own with acceptable evidence or reasoning
which is inconsistent with the contested statement. Marzocchi, 439 F.2d at 224, 169 USPQ at 370.
The examiner has not met this burden. As seen from the rejection quoted above, the examiner
has set forth only the unsupported assertion that the one skilled in the art would consider the
specification not to be enabling. The examiner has not provided any evidence or any reasoning
supporting the conclusion that a person skilled in the art would be required to undertake an undue
amount of experimentation to use the invention with a palladium compound including a carboxylic acid
radical of the formula OCOR’ in which R’ is substituted.
The rejection of claims 6, 7 and 18 is reversed.
REVERSED
)
FRED E. McKELVEY, Senior )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
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