Appeal No. 2001-0918 Page 5
Application No. 08/758,106
position. Instead, we find only the examiner’s unsupported conclusions, as to
why the specification does not enable the claimed invention. In this regard, we
emphasize as set forth in Marzocchi, 439 F.2d at 224, 169 USPQ at 370 that 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.
In the absence of a fact-based statement of a rejection based upon the
relevant legal standards, the examiner has not sustained her initial burden of
establishing a prima facie case of non-enablement. Having found that the
examiner failed to meet her burden of establishing a prima facie case of non-
enablement, we do not consider the Sredni Declaration relied upon by
appellants’ to rebut any such prima facie case.
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007