Appeal No. 95-4674
Application 08/095140
unrelated inventions, thus constituting an improper Markush group, is based on judicial precedent and
is decided on a case-by-case basis. In re Harnisch, 631 F.2d 716, 722-23, 206 USPQ 300, 305-06
(CCPA 1980). The determination of whether unrelated inventions are encompassed by such a claim
must take into consideration the chemical compound as a whole as well as such factors as whether
there is a community of utility, properties and chemical structure and whether the class of compounds
defined by the claim is repugnant to scientific classification. Id. The initial burden of establishing a
prima facie case based on an improper Markush group rests with the Examiner. See In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992), citing In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984) (AAs discussed in In re Piasecki, the examiner
bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie
case of unpatentability.@).
It is well settled that under ' 112, first paragraph, the examiner has the burden of providing a
reasonable explanation, supported by the record as a whole, why the assertions as to the scope of
objective enablement set forth in the specification are in doubt, including reasons why the description of
the invention in the specification would not have enabled one of ordinary skill in this art to practice the
claimed invention without undue experimentation, in order to establish a prima facie case under the
enablement requirement of the first paragraph of ' 112. In re Wright, 999 F.2d 1557, 1561, 27
USPQ2d 1510, 1513 (Fed. Cir. 1993); In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404
(Fed. Cir. 1988); In re Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ 561, 563 (CCPA 1982); In re
Marzocchi, 439 F.2d 220, 223-24, 169 USPQ 367, 369-70 (CCPA 1971). Thus, in order to make
out a prima facie case under this section of the statute, more is required than the Amere possibility of
inclusion of inoperative substances@ since it is well settled that the Afunction of the claims is to point out
the invention and define the scope of the monopoly, not to exclude substances which are possibly of no
use in practicing the invention.@ In re Sarett, 327 F.2d 1005, 1019, 140 USPQ 474, 486 (CCPA
1964).
The examiner alleges that the appealed claims constitute an improper Markush group because
the specification is enabling only for the compounds exemplified in the Table (specification, page 4) and
does not establish that the Athousands if not millions of compounds which are chemically disparate@ in
the absence of a Acommon core essential to the utility alleged herein,@ would Abehave in the same way@
(answer, pages 3-4) and then contends that the range of the Ain-vivo@ results shown in the Table are so
different that the results across the range of compounds encompassed by the appealed claims are
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Last modified: November 3, 2007