Appeal No. 95-3977
Application 08/004,075
OPINION
A. The Rejection under 35 U.S.C. § 112, first paragraph
Claims 46, 52-60, 65 and 66 are all directed to a method of
sanitizing or disinfecting using the composition of claim 27 “for
a time sufficient to sanitize the process facilities” (claim 46)
or “for an effective period of time sufficient to sanitize or
disinfect the solid surface or liquid media” (claim 52). The
examiner states that a specific time “is lacking”, one of
ordinary skill in the art is “forced to guess” at the general or
specific meaning of sanitizing/disinfecting, and perform “undue
experimentation” to arrive at the requisite time (answer, page
3).
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 in the application, including
providing sufficient reasons for doubting any assertions in the
specification as to the scope of enablement. See In re Wright,
999 F.2d 1557, 1561, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993).
The examiner has not met this initial burden by failing to
present any reasonable explanation as to why appellants’
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