Ex parte KEASLING et al. - Page 4




            Appeal No. 1997-2755                                                                              
            Application 08/311,426                                                                            



                   In bulk, a detectable portion of the organic halide is converted to a                      
                   completely reduced form, e.g. trichloroethene to ethene.”                                  
                   From this definition given in the specification, the claims on appeal can be               
            interpreted to mean that a portion of the organic halide in the groundwater (i.e. 25%, 50%,       
            etc.) has all of its halide groups reductively replaced with hydride groups so that it is in a    
            completely reduced form with no halide groups remaining.  In addition, the dehalogenation         
            of the organic halide occurs under reducing (anaerobic) conditions only.                          
            2. ENABLEMENT REJECTION                                                                           
                   The issue raised by the examiner under 35 U.S.C. 112, first paragraph, is whether         
            the terms “carbohydrate” and “organic halide” are unduly broad and would require undue            
            experimentation by one of ordinary skill in the art to determine which carbohydrates or           
            halides are operative in the instant invention.  The examiner is of the opinion that there is     
            insufficient guidance or direction presented in the specification to direct one to determine      
            which substances would work in the claimed method.  The examiner feels that a large               
            number of inoperative embodiments are encompassed by the claims on appeal.                        
                   We do not agree with the examiner’s position since the allegations made by the             
            examiner are not supported by any factual evidence.  Thus, the examiner has not                   
            established a prima facie case of non-enablement.  The examiner has not explained why             
            the guidance set forth in the specification for the selection of particular carbohydrates to      
            use in the claimed method, as well as for the testing, of which organic halides become            

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