Appeal No. 1997-3370
Application 08/472,599
claims as to enable one skilled in the pertinent art to make and use the claimed invention.
In order to establish a prima facie case of lack of enablement, the examiner must
provide a reasonable explanation as to why the scope of protection provided by a claim is
not adequately enabled by the disclosure. In re Wright, 999 F.2d 1557, 1561-62, 27
USPQ2d 1510, 1513 (Fed. Cir. 1993); In re Morehouse, 545 F2d 162, 165 192 USPQ 29
32 (CCPA 1976). The threshold step in resolving this issue is to determine whether the
examiner has met his burden of proof by advancing acceptable reasoning inconsistent with
enablement. Factors to be considered by the examiner in determining whether a
disclosure would require undue experimentation have been summarized by the board in Ex
parte Forman, 230 USPQ 546, 547 (Bd.Pat.App.& Int. 1986). They include (1) the quantity
of experimentation necessary, (2) the amount of direction or guidance presented, (3) the
presence or absence of working examples, (4) the nature of the invention, (5) the state of
the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability
of the art, and (8) the breadth of the claims. (footnote omitted). In re Wands, 858 F.2d 731,
737, 8 USPQ2d 1400, 1404, (Fed. Cir. 1988).
In our opinion, the examiner has failed to set forth a prima facie case of lack of
enablement. It is the examiner’s position that the disclosure is only enabling for claims
limited to the particular isolated D-arabinitol dehydrogenase (DADH) enzyme disclosed in
the specification. The examiner suggests that the appellants have not described or
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