Appeal No. 1997-3370
Application 08/472,599
characterized any other enzymes with these characteristics nor have they demonstrated
convincingly how the skilled artisan would find or isolate or use other enzymes. Examiner’s
answer pages 2-3.
Such a broad allegation by the examiner that the disclosure is speculative, coupled
with a recitation of various difficulties which might be encountered in practice, is not
sufficient basis for requiring proof of operability. In re Chilowsky 229 F2d 457, 463, 108
USPQ 321,326, (CCPA 1956). It does not reasonably appear that the examiner has
advanced acceptable reasoning or provided other evidence to support the position that
one of ordinary skill in the art would find the specification inconsistent with enablement.
The examiner has not provided a reasonable analysis indicating that the factors set forth in
Ex Parte Forman have been considered in a meaningful way to establish a prima facie
case of non-enablement. In considering the enablement rejection before us for review, we
find the following passage from PPG Indus., Inc. v. Guardian Indus. Corp., 75 F.3d 1558,
1564, 37 USPQ2d 1618, 1623 (Fed. Cir. 1996) to be instructive.
In unpredictable art areas, this court has refused to find broad generic claims
enabled by specifications that demonstrate the enablement of only one or a
few embodiments and do not demonstrate with reasonable specificity how to
make and use other potential embodiments across the full scope of the
claim. See, e.g., In re Goodman, 11 F.3d 1046, 1050-52, 29 USPQ2d
2010, 2013-15 (Fed. Cir. 1993); Amgen Inc. v. Chugai Pharm Co., 927
F.2d. 1200, 1212-14, 18 USPQ2d 1016, 1026-28 (Fed. Cir.), cert. denied,
502 U.S. 856 (1991); In re Vaeck, 947 F.2d at 496, 20 USPQ2d at 1445.
Enablement is lacking in those cases, the court has explained, because the
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