Appeal No. 2001-0378 Page 9
Application No. 08/873,876
In order to make a nonenablement rejection, the examiner
has the initial burden to establish a reasonable basis to
question the enablement provided for the 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 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 made, to explain why it doubts
the truth or accuracy of any statement in a supporting
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