Appeal No. 2003-0936
Application No. 09/532,806
Example 3 (Transient Expression Analysis of ZMGRP Promoter
Function) describes the transient expression assays used for
analysis of (Spec., p. 113):
. . . expression of the gus reporter gene (E. coli
beta-glucuronidase) fused to the ZMGRP promoter
with an actin 2 intron (U.S. Serial No. 09/312,304)
(ZMGRP (639) act 2 pGN73, FIG. 1) or without any
intron (ZMGRP (639) pGN73, FIG. 2) . . . .
Having considered the teaching in appellants’ specification,
we now focus on the examiner’s reasons to doubt the objective truth
of the statements contained therein. In re Marzocchi, 439 F.2d
220, 223-24, 169 USPQ 367, 369-70 (CCPA 1971), instructs (footnote
omitted):
As a matter of Patent Office practice . . . 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. . . . .
. . . Most often, additional factors, such as the
teachings in pertinent references, will be available
to substantiate any doubts that the asserted scope of
objective enablement is in fact commensurate with the
scope of protection sought and to support any demands
based thereon for proof. . . . [I]t 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
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