Appeal No. 2007-0301
Application No. 10/277,435
“[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.
Appellant asserts that “[a]ll hindered amine light stabilizers are
derivatives of 2, 2, 6, 6-tetramethyl piperidine” (Br. 7). The examiner
responds that Appellant has not sufficiently established that hindered amine
light stabilizers, as used in the claims, should not be so narrowly defined
(Answer 4). Thus, the issue is how the phrase “hindered amine light
stabilizer” as used in the claims should be defined.
According to the examiner, the disclosure as filed does not teach that
the hindered amine light stabilizers possess the argued piperidine group. Id.
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