Ex Parte Ayisi - Page 3


                  Appeal No. 2006-1608                                                               Page 3                     
                  Application No. 09/978,593                                                                                    

                          “[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.                                                      
                          While 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), the examiner’s primary concern appears to                            







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