Appeal No. 2001-0688
Application No. 08/689,721 Page 6
describing and defining the subject matter sought to be patented
must be taken as being in compliance with the enablement
requirement of 35 U.S.C. § 112, first paragraph, unless there is
a 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 exists, a rejection for
failure to teach how to make and/or use will be proper on that
basis. See In re Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369
(CCPA 1971). As stated by the court,
[I]t 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. In re
Marzocchi, 439 F.2d at 224, 169 USPQ at 370.
The examiner's position (answer, page 3) is that the
originally filed disclosure does not support the order of the
method steps that requires the strap to be placed on the neck of
the user and then requires the recorder to be pulled apart and
placed in the ring; i.e., that the original specification did not
suggest that the ring be placed on the recorder after the strap
was placed on the neck of the user. The examiner acknowledges
that (answer, page 5) "[i]t may be true that, given the apparatus
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