Ex Parte Trigger - Page 4

                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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