Appeal No. 1995-2789
Application No. 07/788,114
We remind the examiner, as set forth in In re Marzocchi, 439 F.2d 220,
224, 169 USPQ 367, 370 (CCPA 1971) 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.
On reflection, it is our opinion, for the reasons given above, that the
examiner failed to meet his burden of establishing that appellants’ specification
fails to provide adequate descriptive support for the claimed invention; or provide
an enabling disclosure of the claimed invention. Accordingly we reverse the
rejection of claims 1, 2, 5, 7 and 10 under 35 U.S.C. § 112, first paragraph.
THE REJECTIONS UNDER 35 U.S.C. § 102(a):
Follettie:
According to the examiner (Supplemental Answer, page 2) “[t]he rejection
of claims 1, 2, 5-7 and 10-13 under 35 U.S.C. § 102(a) over Follettie et al. has
been withdrawn in view of the declaration under 37 CFR [§] 1.132 which
accompanied the appeal brief….” Accordingly, this rejection is not before us for
review.
However, the examiner appears to maintain a rejection (id.) of claims 1, 2,
5-7 and 10-13 under 35 U.S.C. § 102(a) “based on prior knowledge more than
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