Appeal No. 2001-2394 Page 9
Application No. 08/437,306
that ”specifically hybridize” or “hybridize under stringent conditions” to SEQ ID
NO:1 (Examiner’s Answer, pages 5-6). The examiner also concluded that
various claims were nonenabled because of the recitation of sequences that are
“essentially the same” (Examiner’s Answer, pages 7-8), as well as the recitation
of mutations (pages 8-10 and 12-13) and fragments (pages 10-12).
Appellants argue that the claims are enabled throughout their scope
because no more than routine experimentation would be required to make the
claimed sequences and to use them as, among other things, hybridization
probes. See the Appeal Brief, pages 14-19.
“[T]o 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 Wright, 999 F.2d 1557, 1561, 27 USPQ2d 1510,
1513 (Fed. Cir. 1993). “When rejecting a claim under the enablement
requirement of section 112, the PTO bears an initial burden of setting forth a
reasonable explanation as to why it believes that the scope of protection
provided by that claim is not adequately enabled by the description of the
invention provided in the specification of the application; this includes, of course,
providing sufficient reasons for doubting any assertions in the specification as to
the scope of enablement. If the PTO meets this burden, the burden then shifts to
the applicant to provide suitable proofs indicating that the specification is indeed
enabling.” Id. at 1561-62, 27 USPQ2d at 1513.
In this case, we find it impossible to reach the merits of the examiner’s
rejection, because we cannot understand the difference between the subject
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