Appeal No. 1998-2817
Application No. 08/455,366
initial burden to establish a reasonable basis to question the
enablement
provided for a claimed invention. See In re Wright, 999 F.2d
1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993) (examiner
must provide a reasonable explanation as to why the scope of
protection provided by a claim is not adequately enabled by
the disclosure). A disclosure which contains a teaching of
the manner and process of making and 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 a
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
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