Ex parte REINHARDT et al. - Page 7




          Appeal No. 2000-0210                                       Page 7           
          Application No. 08/893,906                                                  


          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 appellants to present persuasive                    
          arguments, supported by suitable proofs where necessary, that               
          one skilled in the art would be able to make and use the                    
          claimed invention using the disclosure as a guide.  See In re               
          Brandstadter, 484 F.2d 1395, 1406, 179 USPQ 286, 294 (CCPA                  
          1973).  In making the determination of enablement, the                      
          examiner shall consider the original disclosure and all                     
          evidence in the record, weighing evidence that supports                     










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