Appeal No. 95-4692
Application 08/141,316
a specification provides an enabling disclosure. We caution
the examiner that the initial burden lies with him to provide
reasons, preferably supported with factual evidence, as to why
it would require undue experimentation for one skilled in the
art to make and use the invention as claimed. The factors to
be considered in determining whether a disclosure would
require undue experimentation have been set forth by the court
in In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed.
Cir. 1988). In the case before us, we find that the examiner
is shifting the burden of proving that the specification
provides an enabling disclosure, to the appellants. That is,
the examiner is requiring the appellants to provide evidence
that the claimed process involves an enzymatic reaction, that
it is monoenzymatic in nature, that it is not cell dependent,
etc. However, the examiner has not provided any reasons as to
why one skilled in the art would have doubted that the claimed
method is not enzymatic in nature, or why it would require
undue experimentation to perform the claimed process in a cell
free system. Moreover, we note that the applied prior art of
record teaches the contrary. We direct attention to Terahara
’227 and ‘859 which teach that the hydroxylation of compactin
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