Appeal No. 1995-2789
Application No. 07/788,114
Enablement:
To satisfy the enablement requirement of 35 U.S.C. § 112, first
paragraph, a patent application must adequately disclose the claimed invention
so as to enable a person skilled in the art to practice the invention at the time the
application was filed without undue experimentation. Enzo Biochem, Inc. v.
Calgene, Inc., 188 F.3d 1362, 1371-72, 52 USPQ2d 1129, 1136 (Fed. Cir.
1999). We note, however, that “nothing more than objective enablement is
required, and therefore it is irrelevant whether this teaching is provided through
broad terminology or illustrative examples.” In re Marzocchi, 439 F.2d 220, 223,
169 USPQ 367, 369 (CCPA 1971). As set forth in In re Wright, 999 F.2d 1557,
1561-62, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993):
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.
Initially, we note that the examiner finds (Answer, page 6) that “[i]t is not
clear from the specification what appellants consider to be the carboxy terminus
of the enzyme. … Are appellants considering that approximately one third of the
gene comprised of about 700 nucleotides as the carboxy terminus of the gene or
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