Appeal No. 1997-2167
Application 08/137,444
but not claimed ones and steps and ingredients neither
disclosed nor even contemplated.
THE "HOW TO USE" REJECTION UNDER § 112
The examiner's rejection of the claims as being based on
a specification which fails to adequately teach "how to use"
the claimed invention is a rejection under the so-called
"enablement" requirement of the first paragraph of 35 U.S.C. §
112. It is incumbent upon the examiner in rejecting claims
under the first paragraph of 35 U.S.C. § 112, to establish a
prima facie case of lack of enablement. In re Strahilevitz,
668 F.2d 1229, 1232, 212 USPQ 561, 563 (CCPA 1982); In re
Wertheim, 541 F.2d 257, 263, 191 USPQ 90, 97 (CCPA 1976); In
re Armbruster, 512 F.2d 676, 677, 678, 185 USPQ 152, 153 (CCPA
1975); In re Marzocchi, 439 F.2d 220, 224, 169 USPQ 367, 370
(CCPA 1971). Moreover, in determining whether or not a
disclosure is enabling, it has been consistently held that the
enablement requirement of the first paragraph of 35 U.S.C. §
112 requires nothing more than objective enablement. In re
Marzocchi, 439 F.2d at 223, 169 USPQ at 369. In meeting the
enablement requirement, an application need not teach, and
preferably omits, that which is well-known in the art.
Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367,
9
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