Appeal No. 1996-3170
Application No. 08/180,371
objective truth of the statements made by applicant as to the scope of enablement. In re
Marzocchi, 439 F.2d 220, 223-24, 169 USPQ 367, 369-70 (CCPA 1971). On the record
before us, we find that the examiner's statements, in support of this rejection, fall short of
the requirement set forth above and fail to provide adequate evidence or reasons why one
skilled in the art would doubt the statements relating to the use the claimed polypeptide.
The lack of a structural relationship or similarity between the claimed polypeptide fragment
to other polypeptides which are known to have CSF activity is insufficient, standing alone,
to establish that one skilled in this art would doubt the objective truth of appellant's
disclosure or that it would not be possible to use the invention without undue
experimentation. The examiner has acknowledged that the claims meet the requirements
of 35 U.S.C. § 112, first paragraph with regard to written description and how to make.
More is required in order to establish a prima facie case of unpatentability of a claimed
invention under 35 U.S.C. § 112, first paragraph, as to whether the disclosure in support of
the claimed invention would enable those skilled in the art to practice the invention without
undue experimentation. See In re Wands, 858 F.2d 731, 8 USPQ2d 1400, (Fed. Cir.
1988).
Thus, to the extent that we understand the examiner's position in this rejection, the
examiner has failed to make those factual findings which must be made before a
conclusion of "lack of enablement" may properly be reached. Having failed to establish a
reasonable basis for questioning the sufficiency of the supporting specification as it relates
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