Appeal No. 1997-3535
Application 08/476,394
the art, and (8) the breadth of the claims. (footnote omitted). In re Wands, 858 F.2d 731,
737, 8 USPQ2d 1400, 1404, (Fed. Cir. 1988).
In our opinion, the examiner has failed to set forth a prima facie case of lack of
enablement. It is the examiner=s position that the disclosure is only enabling for claims
directed to a method for detecting the presence of Candida organism in a host employing
the particular isolated D-arabinitol dehydrogenase (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 page 4. The examiner suggests that
Aappellant's limited showing of one isolated enzyme with the particular activity is not
sufficient to enable a claim drawn to use of all enzymes with that particular activity because
the art of enzymology is too unpredictable: enzymes with the same catalytic activity could
come from diverse origins, be substantially different in size and even have different
catalytic mechanisms.@ Id. The examiner concludes that Ait would require undue
experimentation for the skilled artisan to discover, isolate and use any DAH enzymes which
are incapable of oxidizing mannitol other than that particular one demonstrated by
applicant.@ Answer, page 5. Furthermore, it is the examiner's position that the disclosure of
production of the enzyme is limited to one deposited strain, Candida tropicalis ATCC 750.
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