Appeal No. 1997-4381
Application 08/440,734
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. In re
Morehouse, 545 F.2d 162, 165, 192 USPQ 29, 32 (CCPA 1976). Further, even a broad
allegation 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 F.2d 457, 462, 108 USPQ 321, 325 (CCPA 1956).
In the present case, we find that the examiner has not provided acceptable
evidence that the claimed invention is inconsistent with enablement. At best, we find the
examiner has made broad allegations that the disclosure is speculative and recited
various difficulties which might be encountered in practice of the invention. This is not a
sufficient evidentiary basis for requiring proof of enablement and a shifting of the burden of
proof to appellant.
In addition, contrary to the examiner’s contention, we find that the specification
provides guidance to one of ordinary skill in the art as to how to determine what peptides
will block phage attachment/infection without undue experimentation. The specification,
page 12, lines 28-31, provides that “the blocker peptides of the invention bind and block
binding sites/determinates on the bacteria thereby providing a competition inhibition to
subsequent phage attack.” Thus, it would reasonably appear that one of ordinary skill in
the art can determine blocker peptides within the scope of the invention by their ability to
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