Appeal No. 2002-1339
Application No. 09/148,239
point the weight becomes non-enabled” (answer, page 3).
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 35 U.S.C. § 112 unless there is 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 does exist, a rejection for failure to teach how
to make and/or use will be proper on that basis; such a rejection
can be overcome by suitable proofs indicating that the teaching
contained in the specification is truly enabling, In re
Marzucchi, 439 F.2d 220, 223, 169 USPQ 367, 369-70 (CCPA 1971);
In re Sichert, 566 F.2d 1154, 1162, 196 USPQ 209, 215-16 (CCPA
1977).
In the instant case, the specification describes a rotor
portion of the microactuator and the transducer having a “total
mass of less than 100 :g, preferably less than 50 :g and ideally
less than 10 :g” (specification, pages 6-7) and contains a
description of dimensions, etc. of microactuator parts which will
achieve such total masses. This is not disputed by the examiner.
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