Appeal No. 94-1695
Application 07/742,088
DNA polymerase had been isolated from thermophilic bacteria prior to the effective filing
date of this application. Dr. Fry concludes that one skilled in this art would expect that
those heat-stable polymerases would be active under the temperature conditions used in
the claimed method.
The examiner acknowledges in the paragraph bridging pages 6-7 of the
Examiner’s Answer that other heat-stable DNA polymerases are known in the art as well
as the citation of the references in Dr. Fry’s declaration. However, the examiner appears
to dismiss this prior art knowledge on the basis that appellants did not refer to this prior art
knowledge in the specification of this application.
Again, the examiner’s rejection appears to be based upon a misunderstanding of
the correct legal standard for determining whether a supporting specification provides
enabling support for a claimed invention as well as the avenues available to an applicant to
respond to an enablement rejection. As set forth in In re Marzocchi, 439 F.2d 220, 223,
169 USPQ 367, 369-70 (CCPA 1971), an applicant may rebut a prima facie case of non-
enablement by relying upon “teachings in pertinent references.” Thus, an examiner may
not dismiss out of hand, as apparently occurred here, appellants’ reliance upon prior art
references in responding to a non-enablement rejection merely because those references
were not cited in the specification. Absent a clearer, fact based, legally sound explanation
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