Appeal No. 2000-1919
Application No. 08/831,993
We conclude that the examiner has not met his burden of “setting forth a
reasonable explanation,” Wright, 999 F.2d at 1561-62, 27 USPQ2d at 1513, as to
why he doubts the accuracy of the specification’s assertions. Even if it is true
that Appellant’s data could be better explained, or the photographic data could be
better reproduced, the examiner must do more than simply state that he cannot
interpret the data. The examiner’s burden is 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. This burden has not been carried here. Therefore, the examiner
has not made out a prima facie case of non-enablement.
Summary
We reverse the rejection for non-enablement because the weight of the
evidence of record supports Appellant’s position rather than the examiner’s.
REVERSED
DOUGLAS W. ROBINSON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
DEMETRA J. MILLS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
ERIC GRIMES )
Administrative Patent Judge )
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