Appeal No. 2003-0998 Page 6
Application No. 08/676,143
hydrocarbon templates would share the utility of the genus of polycyclic aliphatic
hydrocarbons and monocyclic heterocycles.” Appeal Brief, pages 8-9.
As Appellants point out, the initial burden of showing nonenablement is on
the examiner. “[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. See also In re Wright, 999 F.2d 1557, 1561-
62, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993):
[T]he 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.
We agree with Appellants that the examiner has not carried the initial
burden of showing that the claims are not enabled by the specification’s
disclosure. With regard to making the claimed libraries, the examiner found that:
(1) the claims do not define specific chemical structures for the templates
of the recited synthetic receptors;
(2) the working examples in the specification do not show all of the
templates encompassed by the claims;
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007