Appeal No. 93-4205
Application 07/618,437
would not have enabled one skilled in the art to make and use
the present
invention, we find his current position to be inconsistent2 3
and unsustainable. That is, the examiner cannot on the one
hand insist that the appellants’ disclosure on how to isolate
the claimed strains is not enabling; and on the other, allege
that an abstract which merely mentions the isolate by name
would have enabled those skilled in the art to make and use
the invention described in claim 1. Thus, we reverse the
rejection with respect to claim 1.
2See the rejection under § 112, first paragraph, on pp.
3-4 of Paper No. 7, mailed February 25, 1992. According to
the examiner, “[t]he specification does not disclose a
repeatable process to obtain the microorganism and it is not
apparent if the microorganism is readily available to the
public.” Although not cited by the examiner, these
requirements were codified under 37 CFR §§ 1.801- 1.809
(effective date January 1, 1990).
3The examiner argues on p. 5 of the Answer that
the applicants contend that the reference used in
the prior art rejection does not make the recited
strain of the subject invention available to the
public. Examiner disagrees. Surely, applicants do
not find their isolation procedure to be beyond one
of ordinary skill given the subspecies identity and
its single defining ability as disclosed in the
prior art reference.
4
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