Appeal No. 1996-3794 Page 5
Application No. 08/212,698
the claimed subject matter. In this respect, we find that appellant’s specification teaches
compositions used in the disinfection of a blood sample or blood component sample on
pages 11 -15 of the specification. We further find that appellant’s specification teaches the
claimed method for disinfecting blood or blood component samples by using the
composition of the claimed subject matter. See pages 15-17 of the specification.
Based upon the above considerations, we find that the examiner has failed to
establish that one of ordinary skill in the art would not be apprised of the scope of the claims
set forth above. Accordingly, the rejection under the second paragraph of 35 U.S.C. § 112
is reversed.
We turn next to the examiner’s rejection under the first paragraph of 35 U.S.C.
§ 112 on the grounds of lack of enablement. See Supplemental Answer, mailed January
25, 1996, page 3. When rejecting a claim under the enablement requirement of section
112, the PTO bears the initial burden of setting forth a reasonable explanation as to why it
believes the scope of protection provided by the claimed subject matter is not adequately
enabled by the description of the invention provided in the specification of the application.
This includes providing sufficient reasons for doubting any assertions in the specification as
to the scope of enablement. If this burden is met, the burden then shifts to the appellant to
provide suitable proof that the specification is enabling. In re Wright, 999 F.2d 1557, 1561,
27 USPQ2d 1510, 1513 (Fed. Cir. 1993); In re Marzocchi, 439 F.2d 220, 223, 169 USPQ
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