Appeal No. 2002-0431
Application 09/309,057
OPINION
We reverse the aforementioned rejection.
Regarding enablement, a predecessor of our appellate
reviewing court stated in In re Marzocchi, 439 F.2d 220, 223-24,
169 USPQ 367, 369-70 (CCPA 1971):
[A] specification disclosure which contains a
teaching of the manner and process of making and using
the 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 in
compliance with the enabling requirement of the first
paragraph of § 112 unless there is reason to doubt the
objective truth of the statements contained therein
which must be relied on for enabling support. . . .
. . . .
. . . 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.
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