Appeal No. 2006-1565 Page 4
Application No. 09/757,610
“[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 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, 2223, 169 USPQ 367, 369 (CCPA
1971) (emphasis original). “[I]t is incumbent upon the Patent Office . . . to explain why it
doubts the truth and accuracy of any statement in the 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. In other words, “the PTO bears
an initial burden of setting forth a reasonable explanation as to why it believes that the
scope of protection provided by [the] claim[s] is not adequately enabled by the
description of the invention provided in the specification of the 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, 27 USPQ2d 1510, 1513
(Fed. Cir. 1993).
Thus, the issue here is not whether appellants have established that the
disclosure is enabling for the scope of the claims; the issue is whether the PTO has met
its “initial burden of setting forth a reasonable explanation as to why” it is not.
On this record, we find that the examiner has not adequately explained why
practicing the full scope of the claims would have required undue experimentation.
Initially we note that the enablement rejection does not begin to address those claims
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