Appeal No. 95-3640
Application 08/147,742
rhinoviruses.
For the above reasons, we find that the examiner has not
established a prima facie case of lack of utility of the
invention recited in any of appellants’ claims. Consequently,
we reverse the rejection of claims 1-6 under 35 U.S.C. § 101.
Rejection under 35 U.S.C. § 112, first paragraph
A specification complies with the 35 U.S.C. § 112, first
paragraph, enablement requirement if it allows those of
ordinary skill in the art to make and use the claimed
invention without undue experimentation. See In re Wright,
999 F.2d 1557, 1561, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993);
Atlas Powder Co. v. E.I. du Pont De Nemours & Co., 750 F.2d
1569, 1576, 224 USPQ 409, 413 (Fed. Cir. 1984).
The examiner argues that appellants’ specification would
not have enabled one of ordinary skill in the art to prevent
the common cold (answer, pages 5-6). It is our view that one
of ordinary skill in the art would have interpreted the
preamble of appellants’ claim 1 as discussed above, and would
not have interpreted it as stating that the method prevents
the spread of rhinovirus induced colds by all mechanisms. The
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