Appeal 2007-0003
Application 10/217,990
transformation, since magnetic resonances in general, and non-existing
charged magnetic resonances 'coming from the center of the Earth' in
particular cannot change chemical structures.” (Answer 4).
The first paragraph of 35 U.S.C. § 112 requires nothing more than an
objective enablement. In re Marzocchi, 439 F.2d 220, 223-24, 169 USPQ
367, 369-70 (CCPA 1971). How such teaching is set forth, either by use of
illustrative examples or by broad terminology, is irrelevant. Id. As those
skilled in the art will appreciate, the Specification provides lists of suitable
materials for forming the transition unit (Specification 5-9). Since
Appellant’s Specification contains a written description of the suitable
materials and their arrangement corresponding with the scope of the claims
on appeal, compliance with the enablement requirement is presumed.
Marzocchi, 439 F.2d at 223-24, 169 USPQ at 369-70.
It is the Examiner’s burden to present adequate basis for doubting the
objective truth of Appellant’s statements in the Specification, i.e., to provide
scientific reasoning and/or evidence as to why one of ordinary skill in the art
would not have been able to make and use the full scope of the subject
matter claimed based on the written description of the invention in the
Specification without undue experimentation. Id. On this record, however,
the Examiner has not carried this burden. The Examiner has not proffered
adequate scientific reasoning and/or evidence to doubt the accuracy of
Appellant’s statements in the Specification. (Answer 3-6). The Examiner
has not adequately considered and explained, inter alia, the state of the prior
art, the nature of the invention, the working examples and the amount of
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