Appeal No. 2002-1874 Page 4
Application No. 09/079,329
the rejection asserts that since the prior art “does not teach or suggest that
arginine is capable [of interacting] with any carbonyl containing compound taken
at random,” the state of the art is rendered unpredictable. See id.
The rejection thus concludes that as the prior art is unpredictable, and as
there is insufficient guidance and working examples, “one skilled in the art could
not make and/or use the invention with the claimed breadth without an undue
amount of experimentation.” Id. at 6-7.
Appellant argues that the specification is enabling for carbonyl groups
other than methylglyoxal. Appeal Brief, page 3. We agree.
“[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.”
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.
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