Appeal No. 1996-2123
Application No. 08/069,458
With the specification=s disclosure of how to mutate and screen for a biologically pure strain of
Acetobacter as claimed, and Valla=s teaching that cellulose negative mutants are due to biological
selection, not an extremely high mutation frequency, there is no remaining factual basis to support the
conclusion that the claims are not enabled by the specification. While a certain degree of experimentation
may be necessary, what is required from the examiner is a fact-based explanation stating why such
experimentation would be Aundue.@ We recommend that the examiner review Enzo Biochem, Inc. v.
Calgene, Inc., 188 F.3d 1362, 52 USPQ2d 1129 (Fed. Cir. 1999). Therein, the court provided a model
analysis of enablement issues and illustrated the type of fact finding which is needed before one is in a
proper position to determine whether a given claim is enabled or non-enabled.
The examiner states, in the bridging paragraph of pages 11-12 of the Examiner=s Answer, that
Aappellants have only provided working examples of specific strains and have not actually screened for
any other strains to show that the amount of direction or guidance and quantity of experimentation
necessary is sufficient to enable the cla imed invention to the extent encompassed by the present claim
scope.@ The examiner continues on page 12 of the Examiner=s answer that, A[i]t is not clear from the
declarations, in support of this argument, that any and all mutants will produce reticulated cellulose;
especially since Valla teaches that the two forms, that is cellulose producing and non-cellulose producing,
vary considerably and that a mixture of these cells may coexist in culture.@
The examiner=s position appears to be that the claims include inoperative embodiments.
Therefore, the examiner is directed to Atlas Powder Co. v. E.I. DuPont De Nemours & Co., 750 F.2d
1569, 1576-77, 224 USPQ 409, 414 (Fed. Cir. 1984):
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