Appeal No. 96-0051 Page 8
Application No. 07/987,256
specification provides guidance on how to isolate a cDNA for at least
one such protein (Paper No. 1 at 24-25). The enablement rejection is
thus best understood as a scope of enablement rejection. See
Cortright, 165 F.3d at 1356, 49 USPQ2d at 1466 (characterizing
enablement scope rejections). The question is whether one skilled in
the art at the time of filing could have isolated a cDNA for each
50 kD synthase protein. Assuming, arguendo, that the specification
discloses two 50 kD synthase proteins, it explains how to isolate
both proteins (Paper No. 1 at 24) and how to generate probes for a R.
communis cDNA library based on partial sequences of the isolated
protein (Paper No. 1 at 24-25). The examiner has not explained why
this would not be sufficient. Although the examiner notes the
confusion regarding the identity and relationship of the disclosed
proteins, the rejection before us is lack of enablement, not written
description.4 As previously noted, these are distinct requirements
with distinct tests. Consequently, we do not find a preponderance of
evidence in the record to support the enablement rejection of
claim 21.
Objections to the specification
4 Since the filing of the present appeal, the Court of
Appeals has clarified the application of the written description
requirement in biotechnology sequence cases. Regents of the Univ. of
Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1568, 43 USPQ2d 1398, 1405
(Fed. Cir. 1997).
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