Appeal No. 1998-3101
Application 08/313,175
by or, in the alternative, under 35 U.S.C. § 103 as obvious
over Snow.
OPINION
We reverse the aforementioned rejections.
Rejection under 35 U.S.C. § 112, second paragraph
The examiner provides no reason whatsoever as to why he
rejected the claims under 35 U.S.C. § 112, second paragraph.
Accordingly, we reverse this rejection.
Rejection under 35 U.S.C. § 112, first paragraph
Regarding enablement, a predecessor of our appellate
reviewing court stated in In re Marzocchi, 439 F.2d 220, 223-
24, 169 USPQ 367, 369-70 (CCPA 1971):
[A] specification disclosure which contains a
teaching of the manner and process of making and
using the 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 in compliance with the enabling requirement of
the first paragraph of § 112 unless there is reason
to doubt the objective truth of the statements
contained therein which must be relied on for
reason for withdrawing the rejections on these grounds as to
claim 4. Thus, it reasonably appears that the examiner’s
answer should state that these rejections apply to claims 1, 3
and 4. We, therefore, consider the rejections to apply to
each of these three claims.
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