Appeal No. 1996-2240
Application No. 08/105,482
We are persuaded that the specification, together with what is well known in the art,
provides adequate guidance enabling any person skilled in the art to generate frequency
distribution databases and to screen for disorders in addition to those of the working
examples; and that the experimentation necessary to practice the full scope of the claimed
invention, while considerable, would not be undue. Finally, to the extent that the examiner
requires absolute certainty to demonstrate enablement, we note that no legal authority has
been cited in support of this requirement. On the contrary, a requirement for absolute
certainty would be incompatible with the standard of enablement discussed above.
We hold that the examiner has not set forth a reasonable basis for questioning the
enablement of the claims on appeal; accordingly, the rejection of claims 1 through 32
under 35 U.S.C. § 112, first paragraph, is reversed.
Indefiniteness
All of the claims on appeal stand rejected as indefinite under 35 U.S.C. § 112,
second paragraph. See the Examiner’s Answer, pages 7 through 9). To the extent that
this rejection concerns the breadth of certain terms (“‘tumors’, ‘carcinomas’ and
’cardiovascular diseases’ are indefinite since the specification gives no guidance as to
what type of tumors, carcinomas and cardiovascular diseases are diagnosed by the
instant method” “concerning the ‘living subject organism’ [, c]an this organism be a
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