Appeal No. 2002-1250 Page 8
Application No. 09/200,057
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. 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.
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
enabled a person of such skill to make and use the appellant's invention without undue
experimentation. The threshold step in resolving this issue as set forth supra is to
determine whether the examiner has met his burden of proof by advancing acceptable
reasoning inconsistent with enablement. This the examiner has not done for the
reasons set forth in the supplemental brief (pp. 4-6) and reply brief (pp. 1-2).
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