Appeal No. 95-0802
Application 07/814,078
Enablement
In setting forth the rejection of claims 47 through 56 under 35 U.S.C. § 112, first
paragraph, the Examiner notes that the invention depends upon complex and
unpredictable living systems; that the claims are broadly drawn to a method of producing
methane from coal by incubating the coal in the presence of termite digestive tracts or
microorganisms derived from the digestive tracts; and that the working examples involve
only a small number of the 2000 known termite species and one type of coal. The
Examiner argues that the specification provides no criteria for selecting suitable termite
species; that the species used are too few to be representative because termites are a
heterogeneous group; and that lignite is not representative of coal in general because
different grades of coal, derived from different plant materials, would be expected to vary
in their composition and accessibility to degradation. In our view, the Examiner’s position
can be summarized as follows: (1) the specification provides insufficient guidance to
enable one of skill in the art to practice the claimed invention throughout its scope, absent
undue experimentation, and (2) the claims encompass potentially inoperative
embodiments.
We find that the examiner has not met the initial burden of providing reasons
establishing a lack of enablement for the claims. The mere fact that the working examples
involve living systems and are limited to a small proportion of the embodiments
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