Appeal No. 1998-2107
Application No. 08/137,624
amendments were made. Therefore, it is unclear what the status of the rejection is
now, and how the examiner’s rejection meets the limitations of the claims presently
appearing in the record.
Finally, while we take no position regarding the patentability of the claimed
invention it appears that the examiner did not use the correct legal standard to reach
the conclusion that the specification is not enabled. The examiner’s construction of
the rejection suggests to us that the examiner’s concern is more of a 35 U.S.C. §
112, second paragraph, claim definiteness/scope issue rather than one of
enablement under the first paragraph. One must determine the scope of the claims
before one is in a proper position to determine enablement. As set forth in In re
Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971), claim language
must be analyzed “not in a vacuum, but always in light of the teachings of the prior
art and of the particular application disclosure as it would be interpreted by one
possessing the ordinary skill in the pertinent art.”
However, if the examiner intends a rejection under 35 U.S.C. § 112, first
paragraph, it appears that the examiner is questioning whether the disclosure is
sufficient to enable the scope of the claimed invention. If this is the case, the
examiner failed to evaluate the claimed invention under the proper legal standards.
The enablement requirement of 35 U.S.C. or § 112, first paragraph, requires that
the patent specification enable “those skilled in the art to make and use the full
scope of the claimed invention without ‘undue experimentation.’” Genentech, Inc. v.
11 A Final Rejection, mailed May 30, 1995.
11
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