Appeal No. 2000-1751
Application 08/530,264
The claims on appeal stand rejected under 35 U.S.C. § 112, first paragraph
(enablement). The examiner states at page 2 of the Examiner's Answer that the claims are
rejected for the reasons "given in Papers Nos. 9 and 13." Manifestly, the statement of
rejection is improper.
As set forth in the Manual of Patent Examining Procedure (MPEP) § 1208, an
examiner may only incorporate in the answer a statement of a ground of rejection by
reference to a single previous Office action, stating that the answer "should not refer, either
directly or indirectly to more than one prior Office action."
3. Enablement Issue
In an attempt to understand the examiner's position, we have reviewed Paper No. 9
where the rejection originated. In relevant part, the only reason given by the examiner is
that "no enablement is seen for the highly incredible method of use of ‘prevention’ [sic] …
androgenetic alopecia." No further facts or reasons are supplied in support of that
conclusion.
"By now it is well settled that the examiner bears the initial burden of providing
reasons why a supporting disclosure does not enable a claim." In re Marzocchi, 439 F.2d
220, 223, 169 USPQ 367, 369 (CCPA 1971). Merely stating that a claim is directed to a
so-called incredible use does not discharge the examiner's burden of providing facts and
reasons as to why the specification does not enable the claim.
Upon return of the application, the examiner should take a step back and review the
merits of the matter using the proper legal standards.
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