Ex Parte Zehner et al - Page 4

                Appeal 2007-1560                                                                             
                Application 10/680,968                                                                       

                required for activation of the liner material 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 Appellants’ 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 any                             
                adequate scientific reasoning and/or evidence to doubt the accuracy                          
                of Appellants’ statements in the Specification.  (See Answer 3-6).                           
                      The Appellants point to specific portions of the Specification                         
                to address the concerns raised by the Examiner (Br. 4).  Appellants                          
                specifically disclose that the combination of stretching and retracting                      
                portions of the composite material, achieved when donning the                                
                article, activates the composite (Br. 4).                                                    
                      The Examiner has failed to explain why the portions of the                             
                Specification identified by the Appellants would not have been                               
                suitable for a person of ordinary skill in the art to practice the full                      
                scope of the claimed subject matter.                                                         



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