Appeal No. 1997-2338
Application No. 08/173,376
1513 (Fed. Cir. 1993). The examiner’s statements in support of this rejection fall far short
of the minimum factual inquiry necessary to support a rejection of the appealed claims as
based on a non-enabling disclosure. The record, before us, does not reflect a
consideration of any of the factors enumerated in Wands. It is sufficient for purposes of
reviewing this issue to note that conclusionary statements, unsupported by facts or
evidence, can not be regarded as meeting the minimum threshold of establishing a prima
facie case of lack of enablement. Therefore, the rejection of claims 52 - 61 under 35
U.S.C. § 112, first paragraph, is reversed.
The rejection under 35 U.S.C. § 103
Claims 52 - 61 stand rejected under 35 U.S.C. § 103 as being obvious over Hurt,
Stoner, Kydonieus, and Morgan.
In considering the issues raised by this rejection we have concluded that the record
before us is not capable of meaningful review. We, therefore, remand this application to
the examiner for further consideration of the rejection under 35 U.S.C. § 103.
We, initially, note that the Morgan reference would reasonably appear to be the
most relevant to the claimed invention since it mentions ants and describes certain
compounds which are described as “attractants”. These compounds appear to be the
same or at least closely related to the behavior modifying substances of claim 52. Yet, the
abstract, relied on, provides no information on the possible use of these materials in the
control of a selected specie of ant as presently claimed. Similarly, the examiner has relied
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