Appeal No. 2006-1270 Page 3
Application No. 10/222,614
“[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.” In re
Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA 1971) (emphasis in
original). “[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.” Id. at
224, 169 USPQ at 370. Here, the examiner has not provided “acceptable
evidence or reasoning which is inconsistent” with the specification, and therefore
has not met the initial burden of showing nonenablement.
The examiner engages in a Wands analysis, see In re Wands, 858 F.2d
731, 737, 8 USPQ2d 1400, 1403 (Fed. Cir. 1988) (noting that facts that should
be considered in determining whether a specification is enabling include: (1) the
quantity of experimentation necessary to practice the invention, (2) the amount of
direction or guidance presented, (3) the presence or absence of working
examples, (4) the nature of the invention, (5) the state of the prior art, (6) the
relative skill of those in the art, (7) the predictability or unpredictability of the art,
and (8) the breadth of the claims) to come to the conclusion that it would require
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