Appeal No. 1999-0465 Application No. 08/351,548 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 4Page: Previous 1 2 3 4 5 6 7 8 9 10 11 NextLast modified: November 3, 2007