Appeal 2007-1459
Application 10/204,413
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. See In re Marzocchi, 439 F.2d
220, 223, 169 USPQ 367, 369 (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.
Marzocchi, 439 F.2d at 224, 169 USPQ at 370.
In support of this rejection, the Examiner states that Appellant
repeatedly refers to i0 as being a ratio of angular velocity in the Specification
but then refers to i0 as being a gear ratio in claim 11.
We will not sustain this rejection because the Examiner has not shown
that undue experimentation would be required to make and use the
invention. In fact, the Examiner has not addressed the issue of undue
experimentation at all. In addition, as is clear from our findings above,
Appellant’s disclosure teaches that the gear ratio and the ratio of the angular
velocity are the same.
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