Appeal No. 2001-0400
Application No. 08/751,624
The examiner rejected all of the claims except claim 4 (which is limited to using
methylene blue as the dye) as nonenabled. The examiner reasoned that
practicing the full scope of the claims “would require one of ordinary skill in this
art undue experimentation to determine which dye would work in the instant
invention.” Examiner’s Answer, page 9.
“When rejecting a claim under the enablement requirement of section 112,
the PTO bears an initial burden of setting forth a reasonable explanation as to
why it believes that the scope of protection provided by that claim is not
adequately enabled by the description of the invention provided in the
specification of the application; this includes, of course, providing sufficient
reasons for doubting any assertions in the specification as to the scope of
enablement.” In re Wright, 999 F.2d 1557, 1561, 27 USPQ2d 1510, 1513 (Fed.
Cir. 1993). “[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 220, 224, 169 USPQ 367, 370 (1971).
In this case, the weight of the evidence in the record supports Appellants’
position rather than the examiner’s. The examiner sets out a Wands-based
analysis. See In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir.
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007