Appeal No. 1997-1817
Application No. 08/139,693
para. 3) and suggests that TNF is also a suitable polyclonal growth factor (p. 26, col. 2,
para. 2); and, Matsuyama identifies several factors reported to activate HIV gene
expression, including granulocyte-macrophage colony stimulating-factor, immunological
stimuli, infection with viruses such as herpes simplex virus type 1, 12-O-
tetradecanolyphorbol-13-acetate and lymphotoxin (p. 2504, col. 1, para. 1-2) and TNF
(p. 2507, col. 1, para. 3).
A specification of a patent application is presumed to comply with the
enablement requirement of 35 U.S.C. 112, first paragraph. An examiner may reject
claims in a patent application on the basis of an alleged failure of the applicant to
comply with the enablement requirement if the examiner can establish by a
preponderance of the evidence that there is reason to doubt the objective truth of the
statements contained in the specification. In re Marzocchi, 439 F.2d 220, 223-24, 169
USPQ 367, 369-70 (CCPA 1970). In our opinion, the examiner has not sustained his
burden for making the enablement rejection, relying instead on mere conclusory
statements. Moreover, it appears inconsistent to assert that the claimed invention is
only enabled for "specific 'Trigger Factors'" (answer, p. 3), presumably TNF and anti-
Fas antibody, as recited in claim 8 and then to conclude that claim 8 is not enabled.
The examiner argues that while "[a]pplicants' claims read on TNF from any source,"
"TNF does not possess species cross over; that being mouse TNF fails to provide a
physiological effect in humans, with mouse TNF not effecting [sic, affecting] humans"
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