Appeal No. 95-4692
Application 08/141,316
the invention was made to perform the claimed
process in a cell free system. [Answer, pp. 3-
4.]
We do not agree with the examiner’s arguments.
It is well established that the examiner may reject the
claims as being based on a non-enabling disclosure when he has
reason to conclude that one skilled in the art would be unable
to carry out the claimed invention. In re Buchner, 929 F.2d
660, 661, 18 USPQ2d 1331, 1332 (Fed. Cir. 1991); In re
Marzocchi,
439 F.2d 220, 223, 169 USPQ 367, 369 (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 a reason to doubt the objective truth of the statements
contained therein which must be relied on for enabling
support”). Here, we do not find that the examiner has
applied the appropriate legal standard for determining whether
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