Appeal No. 2005-2235 Page 8
Application No. 09/038,894
application; this includes, of course, providing sufficient reasons for doubting any
assertions in the specification as to the scope of enablement.” In re Wright,
999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993). It is,
however, “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 220, 224, 169 USPQ 367, 370 (CCPA 1971).
On this record, despite the evidence set forth in appellants’ specification,
the examiner maintains the enablement rejection based on nothing more than an
opinion. The examiner makes no attempt to favor this record with an evidentiary
basis to support his opinion. Accordingly, we find the weight of the evidence
favors appellants. The rejection of claims 32-36, 38, 41 and 42 under 35 U.S.C.
112, first paragraph is reversed.
Claims 10-18, 32-36, 38, 41 and 42
Claims 10-18, 32-36, 38, 41 and 42 stand rejected under 35 U.S.C. § 112,
first paragraph, as being based on an insufficient disclosure to support or enable
the full scope of the claimed invention.
According to the examiner (Answer, page 5), while appellants’
specification provides an enabling disclosure “for treating hemorrhagic shock by
assessing for free radical production using phenol red and then if levels are
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