Appeal No. 1998-3101
Application 08/313,175
enabling support. . . .
. . . .
. . . 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.
The examiner argues that the specification does not
provide guidelines which would have enabled one of ordinary
skill in the art to make the broad class of polymers
encompassed by the claims and to use them as thickeners and
cosmetic additives (answer, pages 4-5).2
The examiner’s assertion that the specification does not
provide sufficient guidelines is not supported by the required
evidence or reasoning. Particularly, the examiner does not
address the discussion in the specification regarding how the
quaternary ammonium compounds and copolymers are made (page 6,
2The examiner also argues: “Use of the term ‘it also
being possible....’ has not fully described as directed to
broad class of polymers” (answer, page 5). The examiner does
not state, and we do not find, where this phrase, which is not
in the claims, appears in the record.
-4-4
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