Appeal No. 2001-2394 Page 11
Application No. 08/437,306
reconsider her position on that issue. We note that we are not reversing the
rejection; we are simply “undoing” it because we cannot see the distinction the
examiner makes between enabled and nonenabled subject matter. See, e.g., Ex
parte Zambrano, 58 USPQ2d 1312, 1313-14 (Bd. Pat. App. Int. 2001) (“[W]hen
an examiner’s rejection is vacated the Board does not take an ultimate position
on the correctness of an examiner’s rejection. The rejection may or may not be
correct.”).
Upon return of this case, the examiner should reconsider the basis of the
nonenablement rejection in light of facts of the case and the appropriate legal
standards. If the examiner concludes that practicing the full scope of some or all
of the claims would have required undue experimentation, our decision today
does not preclude a new rejection under 35 U.S.C. § 112, first paragraph. If such
a rejection is made, however, the examiner should take care to explain why the
rejected claims are not enabled throughout their full scope, even if they
encompass some enabled subject matter.
In reconsidering the issue of enablement, the examiner should review the
Board decision in application 08/228,931 (the parent of the present application).
A copy of the earlier opinion is attached.
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