Appeal No. 1997-3378
Application 08/487,946
(DADH) enzyme, isolated from a specific Candida species, as disclosed in the
specification. The examiner suggests that the appellants have not described or
characterized any other enzymes with these characteristics nor have they demonstrated,
convincingly, how the skilled artisan would find or isolate or use other enzymes.
Examiner’s Answer pages 2-3.
Such a broad allegation by the examiner that the disclosure is speculative, coupled
with a recitation of various difficulties which might be encountered in practice, is not
sufficient basis for requiring proof of operability. In re Chilowsky, 229 F.2d 457, 463, 108
USPO 321, 326 (CCPA 1956). It does not reasonably appear that the examiner has
advanced acceptable reasoning, specific argument or other form of evidence which would
support the proposition that one of ordinary skill in the art would find the specification
inconsistent with enablement. The examiner has not provided a reasoned analysis
indicating that the factors set forth in Ex Parte Forman have been considered in a
meaningful way to establish a prima facie case of enablement.
In considering the enablement rejection before us for review, we find the following
passage from PPG Indus., Inc. v. Guardian Indus. Corp., 75 F.3d 1558, 1564, 37 USPQ2d
1618, 1623 (Fed. Cir. 1996) to be instructive.
In unpredictable art areas, this court has refused to find broad generic claims
enabled by specifications that demonstrate the enablement of only one or a
few embodiments and do not demonstrate with reasonable specificity how to
make and use other potential embodiments across the full scope of the
claim. See, e.g., In re Goodman, 11 F.3d 1046, 1050-52, 29 USPQ2d
2010, 2013-15 (Fed. Cir. 1993); Amgen, Inc. v. Chugai Pharmaceutical Co.,
927 F.2d. 1200, 1212-14, 18 USPQ2d 1016, 1026-28 (Fed. Cir.), cert.
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