Appeal No. 96-1027
Application 08/162,288
should have included claims 4 and 18. 2). With regard to the third enablement rejection,
which is directed to claims 4, 17-19, and 21-23, examiner argues (Examiner's Answer, p.
4) that the disclosure is enabling only for construct pJR16S. That argument applies equally
to claim 24; yet the rejection of claim 24 (Examiner's Answer, p. 5) has been withdrawn.
Secondly, in our assessment, the three enablement rejections are directed to
different aspects of the same issue: whether the disclosure sufficiently teaches those of
ordinary skill in the art how to make and use the inventive process as broadly as it is
claimed without undue experimentation. Enablement rejection 1 focusses on the source of
the claimed DNA construct involving polygalacturonase and pectinesterase sequences.
Enablement rejection 2 focusses on the type of plant cells. Enablement rejection 3
focusses on the particular construct pJR16S, as well as the length of the recombinant DNA
sequence. In each instance, the examiner argues that undue experimentation would be
required for one skilled in the art to practice the invention as broadly as it is claimed.
Accordingly, for purposes of discussion, we will treat the enablement rejections together.
The initial burden of providing reasons why a supporting disclosure does not enable
the claims rests with the examiner. In re Marzocchi, 439 F.2d 220, 223, 169 USPQ
367, 369 (CCPA 1971). The examiner must establish that appellants have not provided
sufficient disclosure, either through illustrative examples or terminology, for one skilled in
the art to practice the invention as broadly as claimed without having to resort to undue
experimentation. See In re Vaeck, 947 F.2d 488, 496, 20 USPQ2d 1438, 1445 (Fed. Cir.
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