Appeal No. 2002-1371 Page 5
Application No. 08/474,796
administrative record showing the evidence which the findings are based; the
board must assure the requisite findings are made, based on evidence of
record).
We recognize appellant’s argument (Brief, page 20), “the law places a
burden on the PTO to come forward initially on scope of enablement. This has
not been done by reference to the application as filed or by proper interpretation
of extrinsic evidence and certainly not by clear and convincing evidence….” In
this regard, we remind the examiner, as set forth in In re Marzocchi, 439 F.2d
220, 224, 169 USPQ 367, 370 (CCPA 1971) 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.
For the forgoing reasons, it is our opinion, that the rejection under 35
U.S.C. § 112, first paragraph is not based upon the correct legal standards.
Accordingly we vacate the rejection under 35 U.S.C. § 112, first paragraph, and
remand the application to provide the examiner with an opportunity to reconsider
the administrative file and to take appropriate action.
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