Appeal No. 1999-1631
Application 08/733,586
specification: "A difference between the p-channel mean xpm
and the n-channel mean xnm may be in the range of the minimum
feature size of a given technology (e.g., 0.5 microns) to one
half of the cell width." The examiner's contention
that this claim lacks an enabling disclosure is unconvincing
because it is based on insufficient reasoning. In re
Marzocchi, 439 F.2d 220, 223-24, 169 USPQ 367, 369-70 (CCPA
1971) explains:
As a matter of Patent Office practice, then, 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
enabling support. Assuming that sufficient reason
for such doubt does exist, a rejection for failure
to teach how to make and/or use will be proper on
that basis; such a rejection can be overcome by
suitable proofs indicating that the teaching
contained in the specification is truly enabling.
. . . 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.
Cf. In re Gazave, 379 F.2d 973, 54 CCPA 1524[, 154
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