Appeal No. 1996-3318
Application No. 08/287,056
OPINION
The claimed invention is directed to a method comprising adding glucose oxidase,
and optionally glucose or a source of glucose, to industrial process waters or slurries to
combat, i.e., decrease the number of, microorganisms therein.
1. Rejection of claims 1-2 and 7-8 under 35 U.S.C. § 112, first paragraph (enablement)
According to the examiner, the claimed process requires addition of both glucose
oxidase and glucose to the industrial process waters or slurries to obtain an industrially
significant reduction of microorganisms therein, i.e., addition of glucose is not optional and
use of a source of glucose rather than glucose per se is not effective (answer, pages 3-4
3
and 7-10).
The enablement requirement of 35 U.S.C. § 112, first paragraph, requires that the
patent specification enable “those skilled in the art to make and use the full scope of the
claimed invention without ‘undue experimentation.’” Genentech, Inc. v. Novo Nordisk A/S,
108 F.3d at 165, 42 USPQ2d at 1004 (quoting In re Wright, 999 F.2d 1557, 1561, 27
USPQ2d 1510, 1513 (Fed. Cir. 1993)). A specification of a patent application is
presumed to comply with the enablement requirement of 35 U.S.C. § 112, first paragraph.
3 The examiner cited “M.P.E.P. §§ 706.03(n) and 706.03(z)” (answer, page 3). These sections are
entitled “Correspondence of Claims and Disclosure” and “Undue Breadth,” respectively, and last appeared in
the Sixth Edition of the MPEP (Jan. 1995). See Rev. 1 of the Sixth Edition of the MPEP (Sept. 1995). We
observe that both of these sections remained unchanged since at least Rev. 6 of the Fifth Edition of the
MPEP (Oct. 1987). Neither section refers to 35 U.S.C. § 112, first paragraph, in whole or by requirement,
and thus we will not further refer in this decision to either of these MPEP sections.
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