Appeal No. 2005-2760
Application 09/915,963
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
Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA 1971); In
re Sichert, 566 F.2d 1154, 1161, 196 USPQ 209, 215 (CCPA 1977).
When a rejection is made on the basis that the disclosure
lacks enablement, it is incumbent upon the examiner to explain
why he/she doubts the truth or accuracy of any statement in a
supporting disclosure and to back up assertions with acceptable
evidence or reasoning which is inconsistent with the contested
statement.
Apparently, the examiner is taking the position that nothing
can travel faster than the speed of light, as far as conventional
physics is concerned, and that, therefore, any recitation of a
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007