Appeal No. 1996-3794 Page 6
Application No. 08/212,698
367, 369 ( CCPA 1971). It is the examiner’s position that the appellant has not provided
any information regarding the maintenance of the immunological characteristic of the cell.
See Supplemental Answer, mailed January 25, 1996, page 3. However, as determined
supra, it is well settled that the burden rests with the examiner to establish lack of
enablement. In the absence thereof, appellant is under no burden to provide suitable proof
that the specification is enabling. As the balance of the examiner’s rejection is directed to
speculation that an interaction between the surfactant and the surface of the molecules in
solution might result in changing the physical and chemical characteristics of the cells
present, we conclude that the examiner has not met his burden of providing a reasonable
explanation for lack of enablement. See Supplemental Answer, mailed January 25, 1996,
page 3. Moreover, we find that the specification on pages 10-18 and the examples fully
enable the subject matter claimed by appellant. Accordingly, we reverse the rejection under
35 U.S.C. § 112, first paragraph.
The Rejection under Hicks
“[T]he examiner bears the initial burden, on review of the prior art or on any other
ground, of presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). The examiner relies upon a reference to
Hicks to reject the claimed subject matter and establish a prima facie case of obviousness.
The basic premise of the rejection is that the reference to Hicks discloses that nonoxynol-9
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