Appeal No. 2002-1557 Page 4
Application No. 09/305,746
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.” In
re Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA 1971) (emphasis
in original). “[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.” Id. at 224, 169 USPQ at 370. Here, the examiner has not provided
“acceptable evidence or reasoning which is inconsistent” with the specification,
and therefore has not met the initial burden of showing nonenablement.
The examiner contends that Shimada is evidence of non-enablement. A
claim may, however, encompass inoperative embodiments and still meet the
enablement requirement of 35 U.S.C. § 112, first paragraph. See Atlas Powder
Co. v. E.I. Du Pont De Nemours & Co., 750 F.2d 1569, 1576, 224 USPQ 409,
413 (Fed. Cir. 1984), In re Angstadt, 537 F.2d 498, 504, 190 USPQ 214, 218
(CCPA 1976). The examiner has not provided evidence that it would require an
undue amount of experimentation to determine those liquid compositions that
would achieve the claimed method.
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