Appeal No. 94-0224
Application 07/322,604
Amy, Penny et al. (Amy), “Characterization of Aquatic Bacteria and Cloning of Genes
Specifying Partial Degradation of 2,4-Dichlorophenoxyacetic Acid”, 49 Applied and
Environmental Microbiology, No. 5, 1237-1245 (May 1985).
Comai, L, et al. (Comai), “Expression in plants of a mutant aroA gene from Salmonella
typhimurium confers tolerance to glyphosate”, 317 Nature, 741-744 (Oct. 1985).
Claims 23, 32, 33, 35, 42, 43, 45, 48 and 51-53 stand rejected under 35 U.S.C.
§ 112, first paragraph, as being nonenabled. Claim 46 stands rejected under 35 U.S.C. §
112, second paragraph, as being indefinite. Claims 17, 18, 23, 32, 33, 35, 42, 43 and 45-
53 stand rejected under 35 U.S.C. § 103 as unpatentable over Amy and Béguin in view of
Comai.
We reverse. In addition, we remand the application for the examiner to consider
additional issues.
DISCUSSION
1. Enablement
The only reason given by the examiner in setting forth this rejection in the
paragraph bridging pages 3-4 of the examiner’s answer is that “the specification is not
enabling for the isolation of production of any 2,4-D monooxygenase gene from any
source.” By now it is well settled that the examiner bears the initial burden of providing
reasons why a supporting disclosure does not enable a claim. In re Marzocchi,
3
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