Appeal No. 2002-0296 Page 6
Application No. 09/248,553
protection provided by a claim is not adequately enabled by the disclosure). A
disclosure which contains a teaching of the manner of making and using an 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 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.1 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.
In re Marzocchi, 439 F.2d at 224, 169 USPQ at 370.
Thus, the dispositive issue is whether the appellant's disclosure, considering the
level of ordinary skill in the art as of the date of the appellant's application, would have
1 Once the examiner has established a reasonable basis to question the enablement provided for
the claimed invention, the burden falls on the 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).
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