Appeal No. 93-4205
Application 07/618,437
As to the examiner’s argument that there is no
requirement that non-patent publications provide an enabling
disclosure, we find his position, indisputably, erroneous.
Answer, p. 5, first complete para. It is well established
that an anticipatory reference “must describe the applicant’s
claimed invention sufficiently to have placed a person of
ordinary skill in the field of the invention in possession of
it.” In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657
(Fed. Cir. 1990); Akzo N.V. v. International Trade Commission,
808 F.2d 1471, 1479, 1 USPQ2d 1241, 1245 (Fed. Cir. 1986)
(“the prior art reference must be enabling, thus placing the
allegedly disclosed matter in the possession of the public”).
As pointed out by the examiner the “mere use of a scientific
name and a description of the single characteristic of
antagonistic ability is inadequate” for purposes of
enablement. Paper No. 7, sentence bridging pp. 2-3.
We note that the examiner refers to two, additional
references, Janisiewicz ‘87 and Janisiewicz ‘88, which were
not included in the statement of the rejection. Purportedly,
these references demonstrate that the claimed microorganism
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