Appeal No. 2001-1193
Application No. 08/463,761
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,
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.
Id. at 224, 169 USPQ at 370.
Once the Examiner has established a reasonable basis to
question the enablement provided for the claimed invention, the
burden falls on Appellant to present persuasive arguments,
supported by suitable proofs where necessary, that one skilled
in the art would be able to make and use the claimed invention
using the disclosure as a guide. See In re Brandstadter,
484 F.2d 1395, 1406, 179 USPQ 286, 294 (CCPA 1973). In making
the determination of enablement, the Examiner shall consider the
original disclosure and all evidence in the record, weighing
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