Appeal No. 95-2208
Application 07/987,572
Claims 1, 2, 5, 6, 8 through 11, and 15 through 17 stand rejected under
35 U.S.C. § 112, first paragraph (enablement). We reverse.
DISCUSSION
The statement of the rejection is set forth on pages 5-7 of the examiner's answer. In
essence, the examiner would have appellants limit the claims on appeal to the specific
vector described in the working examples of this application. The examiner has set forth
four separate reasons why the claims should be so limited.
In considering the four reasons, we find that the examiner has failed to take into
account the proper legal standards in determining whether the subject matter of a given
claim is enabled as required by 35 U.S.C. § 112, first paragraph. As a consequence, the
examiner has not engaged in the fact finding needed in order to properly reach a
conclusion of non-enablement under this section of the statute.
As set forth in In re Marzocchi, 439 F.2d 220, 223, 160 USPQ 367, 369 (CCPA
1971), it is the examiner's initial burden to explain why one skilled in the art would doubt the
enabling statements set forth in the supporting specification of a patent application. Here,
the examiner has focused on the working examples contained in the supporting
specification and has not taken into account the broader statements contained in this
(...continued)2
in reaching our decision.
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