Appeal Number: 2007-0133
Application Number: 10/223,466
Antibodies, Inc., 802 F.2d 1367, 1384, 231 USPQ 81, 94 (Fed. Cir. 1986), cert.
denied, 480 U.S. 947 (1987); and Lindemann Maschinenfabrik GMBH v. American
Hoist & Derrick Co., 730 F.2d 1452, 1463, 221 USPQ 481, 489 (Fed. Cir. 1984).
In order to make a rejection, the examiner has the initial burden to establish a
reasonable basis to question the enablement provided for the claimed invention. In
re Wright, 999 F.2d 1557, 1562, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993)
(examiner must provide a reasonable explanation as to why the scope of protection
provided by a claim is not adequately enabled by the disclosure). A specification
disclosure which contains a teaching of the manner and process of making and
using an 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 being in
compliance with the enablement requirement of 35 U.S.C. 112, first paragraph,
unless there is a reason to doubt the objective truth of the statements contained
therein which must be relied on for enabling support. Assuming that sufficient
reason for such doubt exists, a rejection for failure to teach how to make and/or use
will be proper on that basis. In re Marzocchi, 439 F.2d 220, 224, 169 USPQ 367,
370 (CCPA 1971). As stated by the court, "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. Otherwise, there would be no need for the applicant to go to
the trouble and expense of supporting his presumptively accurate disclosure." 439
F.2d at 224, 169 USPQ at 370.
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