Appeal No. 95-1618
Application 08/033,456
appealed claims is based on the written description requirement of 35 U.S.C. § 112, it is reversed.
As for ground (ii) of the rejection under the first paragraph of 35 U.S.C. § 112, the examiner
asserts that “Applicants’ disclosure is conspicuously devoid of any specific recitation of examples that
would be considered necessary in the instant case to objectively enable the invention, i.e. teach one
of ordinary skill how to make all the disclosed tautomers and/or isomers” and that undue experi-
mentation would be required for one skilled in the art “to define the true scope of the claimed
invention and reduce it to practice” (Paper No. 26, p. 4). We find that the rejection lacks merit.
First, we note that the written description requirement is separate from the enablement requirement.
See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991); In
re Wilder, 736 F.2d 1516, 1520, 222 USPQ 369, 372 (Fed. Cir. 1984), cert. denied, sub nom. Wilder
v. Mossinghoff, 469 U.S. 1209 (1985); In re Barker, 559 F.2d 588, 591, 194 USPQ 470, 472 (CCPA
1977), cert. denied, sub nom, Barker v. Parker, 434 U.S. 1238 (1978). The rejection before us
appears to be grounded only on lack of enablement, i.e. how to make and use the invention, and not
on an inadequate written description of the claimed invention because the examiner has not shown
that the alleged failure to present working examples in the disclosure of the application as originally
filed would have reasonably conveyed to a person having ordinary skill in the art that the inventors
did not have possession at that time of later claimed subject matter. In re Kaslow, 707 F.2d 1366,
1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983). Second, the examiner’s assertions of lack of
enablement and undue experimentation are conclusional in nature. The examiner has not presented
any objective evidence and/or scientific reasoning to explain why undue experimentation would be
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