Appeal No. 2004-0030 Page 5
Application No. 09/337,492
enabled by the disclosure). A disclosure which contains a
teaching of the manner and process of making and using an
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 being in compliance with the enablement
requirement of 35 U.S.C. § 112, first paragraph, unless there is
a 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 exists, a rejection for
failure to teach how to make and/or use will be proper on that
basis. See In re Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369
(CCPA 1971). As stated by the court,
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.
In re Marzocchi, 439 F.2d at 224, 169 USPQ at 370.
Once the examiner has established a reasonable basis to
question the enablement provided for the claimed invention, the
burden falls on the appellant to present persuasive arguments,
supported by suitable proofs where necessary, that one skilled in
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