Appeal No. 93-2460
Application No. 07/590,647
examiner has not met her burden of establishing a prima facie
case of non-enablement.
In addition, we are puzzled as to the reason for the
examiner’s request that the claim recite specific method steps
which include the nucleic acid intermediate(s). We are not aware
of any case law which supports the examiner’s position. To the
contrary, both the statute and the court direct us, and the
examiner, to determine whether the disclosure in the
specification is sufficient to enable those skilled in the art to
practice the claimed invention. Fiers v. Sugano, 984 F.2d 1164,
1171, 25 USPQ2d 1601, 1607 (Fed. Cir. 1993) (“[e]nablement
requires that the application ‘contain a description that enables
one skilled in the art to make and use the claimed invention,’”
quoting Atlas Powder Co. V. E.I. duPont De Nemours & Co.,
750 F.2d 1569, 1576, 224 USPQ 409, 413 (Fed. Cir. 1984)); United
States v. Telectronics, Inc., 857 F.2d 778, 785, 8 USPQ2d 1217,
1223 (Fed. Cir. 1988), cert. denied 490 U.S. 1046 (1989); In re
Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988);
In re Vaeck, 947 F.2d 488, 495, 20 USPQ2d 1438, 1444 (Fed. Cir.
1991). At best, this aspect of the rejection is a remnant of the
§ 112, second paragraph discussed above. However, having already
1111
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