Appeal No. 2000-0893 Page 12
Application No. 08/392,407
We must emphasize that it is the examiner’s burden to first demonstrate
that the claimed invention is not supported by an enabling disclosure. As set
forth in In re Marzocchi, 439 F.2d 220, 224, 169 USPQ 367, 370 (CCPA 1971) 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.
On reflection, given the examiner’s failure to address the specific
teachings provided in the specification, including the documents incorporated by
reference therein, and his failure to address appellants’ position with regard to
Janda and Schultz, we are compelled to agree with appellants’ position (Reply
Brief, page 10) that “the [e]xaminer has failed to effectively challenge the
presumptive validity of the present invention….” Stated differently, in our
opinion, the examiner failed to meet his burden to establishing a prima facie
case of non-enablement.
Accordingly, we reverse the rejection of claims 80-150 under 35 U.S.C.
§ 112, first paragraph.
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