Appeal No. 2001-0378 Page 10
Application No. 08/873,876
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 appellant 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
enablement2 against evidence that the specification is not enabling.
2 The appellant may attempt to overcome the examiner's
doubt about enablement by pointing to details in the
disclosure but may not add new matter. The appellant may also
submit factual affidavits under 37 CFR § 1.132 or cite
references to show what one skilled in the art would have
known at the time of filing the application.
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Last modified: November 3, 2007