Appeal No. 1997-4381
Application 08/440,734
specification does not provide sufficient examples, and 4) that there is no predictable way
for the skilled artisan to determine what peptides will block phage attachment/infection
without undue experimentation.
In order to establish a prima facie case of non-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. See In re Wright, 999 F.2d 1557, 1561-562, 27
USPQ2d 1510, 1513 (Fed. Cir. 1993). A disclosure which contains a teaching of the
manner and process of making and using an invention in terms which correspond in scope
to those used in describing and defining the subject matter sought to be patented must be
taken as being in compliance with the enablement requirement of 35 U.S.C. § 112, first
paragraph, unless there is a reason to doubt the objective truth of the statements contained
therein which must be relied on for enabling support. See
In re Marzocchi, 439 F.2d 220, 224, 169 USPQ 367, 370 (CCPA 1971). As stated by the
court,
it is incumbent upon the Patent Office, whenever a rejection on this
basis is made, to explain why it doubts the truth or accuracy of any
statement in a supporting disclosure and to back up assertions of its
own with acceptable evidence or reasoning which is inconsistent with
the contested statement. Otherwise, there would be no need for the
applicant to go to the trouble and expense of supporting his
presumptively accurate disclosure.
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