Appeal No. 1997-3655
Application No. 08/351,136
concludes that “the facts of this case are such that if the
claims in fact cover substantially or radically different
structures, then these claims are broader than permitted by
the first paragraph of
35 U.S.C. § 112" (second supplemental examiner’s answer, page
1). Further in this regard, it is the examiner’s contention
that, “in a complex technology such as this when compositions
are described in terms of partial structure and properties, if
the claims cover compositions substantially different in
structure and when appellants can, without burden, provide
this information but refuse to do so, the Examiner can
properly assume that the claims do cover subject matter
substantially beyond the enablement” (answer, page 16).
It is apparent from the record in general and the above
quotations in particular that the rejection before us is
premised upon suspicions and assumptions by the examiner.
However, suspicions and assumptions do not constitute
acceptable reasoning inconsistent with enablement. This is
particularly so in this case where these suspicions and
assumptions, aside from being unsupported by probative
evidence, are vague in that they relate to claim coverage of
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