Appeal No. 95-2710
Application 08/011,837
of an antibody which can agglutinate sexually transmitted
disease pathogens and sperm (answer, pages 4, 7 and 8).
Appellants argue that their specification discloses five
antibodies which are useful for carrying out the claimed
methods and provides six criteria for screening additional pan
semen antibodies (brief, pages 7-10). The specification,
appellants argue (brief, page 9), discloses at page 16, lines
26-33, antibodies which immobilize sperm and also immobilize
virtually all other cells in semen by coagulating them with
the sperm (see also, reply brief, pages 4-5).
With respect to enablement, a predecessor of our
appellate reviewing court stated in In re Marzocchi, 439 F.2d
220, 223-24, 169 USPQ 367, 369-70 (CCPA 1971):
[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 § 112 unless there is reason
to doubt the objective truth of the statements
contained therein which must be relied on for
enabling support. . . .
. . . .
. . . it is incumbent upon the Patent Office,
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