Appeal No. 2005-0973
Application No. 09/740,669
Claims 1-4, 10-13, and 19-24 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Lee in view of Bass.
Reference is made to the brief and answer for the respective
positions of appellants and the examiner.
OPINION
Turning, first, to the rejection of claims 5-8, and 14-18
under 35 U.S.C. § 112, first paragraph, “as a matter of Patent
and Trademark 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 35 U.S.C. 112 unless there is 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 does exist, a rejection for
failure to teach how to make and/or use will be proper on that
basis; such a rejection can be overcome by suitable proofs
indicating that the teaching contained in the specification is
truly enabling, In re Marzucchi, 439 F.2d 220, 169 USPQ 367 (CCPA
1971); In re Sichert, 566 F.2d 1154, 196 USPQ 209 (CCPA 1977).
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