Appeal No. 2004-2355
Application No. 09/935,721 Page 4
directed to all magnetic dispersion mediums...” and “[t]he fact
one of ordinary skill in the art could determine what compounds
that can be used in the claimed dispersion does not mean the
specification enables the claimed composition, since the
specification only enables the production of non-toxic magnetic
writing screen dispersion mediums of a non-toxic dispersion
liquid having a viscosity sufficient to prevent the magnetic
particles from settling out, thickener, a white pigment, a
fluorescent whitener and black or dark colored magnetic
particles” (answer, page 5).
With respect to enablement, a predecessor of our appellate
reviewing court stated in In re Marzocchi, 439 F.2d 220, 223-24,
169 USPQ 367, 369-70 (CCPA 1971):
[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. . . .
. . . .
. . . 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
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