Appeal No. 2001-2646 Page 5
Application No. 08/463,951
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.” In re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513
(Fed. Cir. 1993). In this case, we conclude that the examiner has not carried the
initial burden of showing prima facie nonenablement.
With respect to the ground of rejection based on the scope of the “R7”
group, the basis of the rejection seems to be that (1) the scope of the functional
groups recited in the claims for this position is much broader than the working
examples in the specification, and (2) the effect of substituting other moieties for
the exemplified groups is unpredictable. Thus, the examiner apparently
concluded that the claims are nonenabled because they encompass inoperative
embodiments.
This is not an adequate basis to support a conclusion of 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 inoperative, the claims are not necessarily invalid. ‘It is not a function of the
claims to specifically exclude . . . possible inoperative substances . . . .’” (quoting
In re Dinh-Nguyn, 492 F.2d 856, 858-59, 181 USPQ 46, 48 (CCPA 1974)). It is
only “if the number of inoperative combinations becomes significant, and in effect
forces one of ordinary skill in the art to experiment unduly in order to practice the
claimed invention, [that] the claims might indeed be [nonenabled].” Id.
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