Appeal No. 95-1364
Application No. 07/919,287
[A] specification disclosure which contains a teaching of the manner and process
of making and using the invention in terms which correspond in scope to those
used in describing and defining the subject matter sought to be patented must be
taken as in compliance with the enabling requirement of the first paragraph of
Section 112 unless there is reason to doubt the objective truth of the statements
contained therein which must be relied on for enabling support.
Fiers v. Revel, 984 F.2d 1164, 1171-72, 25 USPQ2d 1601, 1607 (Fed. Cir. 1993) quoting In re
Marzocchi , 439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA 1971).
The specification, when filed, must enable one skilled in the particular art to use the invention
without undue experimentation. In re Goodman, 11 F.3d 1046, 1050, 29 USPQ2d 2010, 2013 (Fed.Cir.
1993); In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). The specification
must provide enablement as broadly as the invention is claimed. Goodman, 11 F.3d at 1050, 29 USPQ2d
at 2013, In re Vaeck, 947 F.2d 488, 496, 20 USPQ2d 1438, 1444 (Fed. Cir. 1991)
The rejection of claims 13-15 and 23-30 under 35 U.S.C. 112, ¶ 1
The examiner has objected to the specification under 35 U.S.C. § 112, ¶ 1, concluding that the
specification does not enable one having ordinary skill in the art to make and use the claimed invention.
Claims 13-15 and 23-30 were rejected under 35 U.S.C. § 112, ¶ 1, for the reason set forth in the
objection to the specification.
The examiner has failed to demonstrate that the applicants’ disclosure does not contain a teaching
of the manner and process of using the claimed invention in terms which correspond in scope to the terms
used in describing the invention. Thus, the examiner has the burden of providing evidence or reasoning to
establish a basis to challenge the objective truth of the statements in the specification. Fiers, 984 F.2d at
1172, 25 USPQ2d at 1607. In the examiner’s view certain critical information is missing from the
disclosure. The examiner notes:
Applicants claim a group of compounds that possess a specific utility, yet fail to set
forth the test or the compounds that might fit the test criteria. Claims to preventing
disease conditions are presented, yet Applicant fails to provide information that
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