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
4
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007