Appeal No. 1999-1413
Application 08/176,024
bind to P. vivax sporozoites in the circulation of the host and render the sporozoites
noninfectious thereby preventing malarial disease (specification, pages 4 and 7-8).
Enablement
Claims 1-7, 11 and 12 stand rejected under 35 U.S.C. §112, first paragraph. As
evidence of nonenablement, the examiner cites Charoenvit, Harris, and Mitchell.
Although not explicitly stated in section 112, to be enabling, the specification of a
patent must teach those skilled in the art how to make and use the full scope of the
claimed invention without "undue experimentation." In re Wands, 858 F.2d 73, 736-37, 8
USPQ2d 1400, 1404 (Fed. Cir. 1988); In re Fisher, 427 F.2d 833, 839, 166 USPQ 18,
24 (CCPA 1970) (the first paragraph of section 112 requires that the scope of protection
sought in a claim bear a reasonable correlation to the scope of enablement provided by
the specification). Nothing more than objective enablement is required, and therefore it is
irrelevant whether this teaching is provided through broad terminology or illustrative
examples. In re Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA 1971).
An analysis of whether the claims under appeal are supported by an enabling
disclosure requires a determination of whether that disclosure contained sufficient
information regarding the subject matter of the appealed claims as to enable one skilled in
the pertinent art to make and use the claimed invention. In order to establish a prima facie
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