Appeal No. 1996-1513 Page 4
Application No. 08/241,555
expectation that racemic borneol would likewise repel Aedes
aegyptae. See Answer, pages 5 and 6. We concur with the
examiners finding, albeit not with his conclusion.
When rejecting a claim under the enablement requirement of
Section 112, the PTO bears the initial burden of setting forth
a reasonable explanation as to why it believes the scope of
protection provided by the claimed subject matter is not
adequately enabled by the description of the invention provided
in the specification of the application. This includes
providing sufficient reasons for doubting any assertions in the
specification as to the scope of enablement. If this burden is
met, the burden then shifts to the applicant to provide
suitable proof that the specification is enabling. See In re
Wright 999 F.2d 1557, 1561, 27 USPQ2d 1510, 1513 (Fed. Cir.
1993); In re Marzocchi 439 F.2d 220, 223, 169 USPQ 367, 369 (
CCPA 1971). Although the examiner has provided some basis for
doubting that a single enantiomorph of borneol is a repellent
for Aedes aegyptae, the examiner has not correctly considered
the enablement provided by appellants’ description of the
invention in the specification.
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