Appeal No. 2001-0889 Page 6
Application No. 08/459,086
in the claims “represent epitopic sites on both natural and recombinant human
IFN-β (HuIFN-β),” page 2, and that “[a]ntibodies raised to or having specific
binding affinity for the peptides . . . can be used to detect and monitor levels of
IFN-β in patients during the course of treatment.” Id. The examiner has provided
no evidence to the contrary.
“[A] specification disclosure which contains a teaching of the manner and
process of making and using the invention in terms which correspond in scope to
those used in describing and defining the subject matter sought to be patented
must be taken as in compliance with the enabling requirement of the first
paragraph of § 112 unless there is reason to doubt the objective truth of the
statements contained therein which must be relied on for enabling support.”
In re Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA 1971),
emphasis in original. “[It] is incumbent upon the Patent Office, whenever a
rejection on this basis is made, to explain why it doubts the truth or accuracy of
any statement in a supporting disclosure and to back up assertions of its own
with acceptable evidence or reasoning which is inconsistent with the contested
statement.” Id. at 224, 169 USPQ at 370. Here, the examiner has not provided
“acceptable evidence or reasoning which is inconsistent” with the specification,
and therefore has not met the initial burden of showing nonenablement.
In addition, the fact that the claims may encompass inoperative
embodiments is not enough, by itself, to show nonenablement. See Atlas
Powder Co. v. E.I. Du Pont De Nemours & Co., 750 F.2d 1569, 1576, 224 USPQ
409, 414 (Fed. Cir. 1984) (“Even if some of the claimed combinations were
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