Appeal No. 2000-1919
Application No. 08/831,993
“the application teaches in detail everything one of ordinary skill in the art needs
to practice the invention (i.e. inhibit the development of intracellular parasites in
erythrocytes) without the need for any experimentation beyond routine screening
in simple, disclosed assays.” Ludtke declaration, paragraph 2.
“When rejecting a claim under the enablement requirement of section 112,
the PTO bears an initial burden of setting forth a reasonable explanation as to
why it believes that the scope of protection provided by that claim is not
adequately enabled by the description of the invention provided in the
specification of the application; this includes, of course, providing sufficient
reasons for doubting any assertions in the specification as to the scope of
enablement.” In re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513
(Fed. Cir. 1993). “[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.” In re
Marzocchi, 58 CCPA 1069, 1073, 439 F.2d 220, 224, 169 USPQ 367, 370
(1971).
In this case, the weight of the evidence in the record supports Appellant’s
position rather than the examiner’s. The examiner cited Gwadz and two papers
by Matsuzaki as “indicat[ing] that magainins do not have effect on the
intracellular parasite as they do not penetrate inside the cells.” Examiner’s
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