Appeal No. 1997-3378
Application 08/487,946
supported by an enabling disclosure requires a determination of whether that disclosure
contained sufficient information regarding the subject matter of the appealed 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 F.2d 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 USPO 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
directed to a method employing the particular isolated D-arabinitol dehydrogenase
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