Appeal No. 1999-1407
Application No. 08/295,744
DISCUSSION
In reaching our decision in this appeal, we considered appellants’
specification and claims, in addition to the respective positions articulated by the
appellants and the examiner. We make reference to the examiner’s Answer1 for the
examiner’s reasoning in support of the rejection. We further reference appellants’
Brief2, and appellants’ Reply Brief3 for the appellants’ arguments in favor of
patentability. We note the examiner entered and considered appellants’ Reply
Brief.4
THE REJECTION UNDER 35 U.S.C. § 112, FIRST PARAGRAPH:
“When rejecting a claim under the enablement requirement of section 112,
the PTO bears an initial burden of setting forth a reasonable explanation as to why it
believes that the scope of protection provided by that claim is not adequately
enabled by the description of the invention provided in the specification of the
application; this includes, of course, providing sufficient reasons for doubting any
assertions in the specification as to the scope of enablement.” In re Wright, 999
F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993). “[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
1 Paper No. 30, mailed December 10, 1998.
2 Paper No. 29, received November 9, 1998.
3 Paper No. 31, received February 12, 1999.
3
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007