Appeal No. 2004-0576 Page 4
Application No. 10/087,374
In order to make a nonenablement rejection, the examiner has the initial burden
to establish a reasonable basis to question the enablement provided for the claimed
invention. See In re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed.
Cir. 1993) (examiner must provide a reasonable explanation as to why the scope of
protection provided by a claim is not adequately 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.
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007