Appeal No. 1997-2385
Application No. 08/271,571
determine what their denaturation temperature would be under the unspecified conditions
and time period" (Answer, p. 5). Thus,
[i]t is the examiner's position that to practice the presently claimed invention,
one would need to selectively denature most of the majority of the enzymes
in a plant, the undesired enzymes, while 90% of the desired enzymes would
not be denatured, under identical conditions without prior separation. All of
6
these enzymes would be found in the same plant. [Supplemental answer, p.
2.]
After reviewing the record, we do not find that the examiner has established a prima
facie case of lack of enablement.
First, the examiner's conclusory statement that the specification "is not enabling to
teach one of skill what the relative denaturation temperatures of the therapeutic active
ingredient and undesired enzymes are, nor how to find them" (Answer, p. 4) is unsupported
by evidence or a reasoned analysis under Wands.
Second, the specification not only provides generic guidance suggesting
temperatures between 70 and 90E C for denaturation temperatures of plant enzymes (see
e.g., Background of the Invention) but also provides a number of specific working
examples (see e.g., Example 3). The examiner has not provided no reason why this
disclosure is insufficient to enable the invention.
Third, to the extent that the examiner appears to equate "desirable plant enzymes"
(versus undesirable plant enzymes) to the therapeutic active ingredients of the claims (see
6Paper No. 45, mailed August 29, 1996.
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