Appeal No. 1997-2393
Application No. 08/183,381
induced protective immunity against the original [Trypanosoma] antigenic variant to
which the Ab1 was directed.”
It is well settled that the examiner bears the initial burden of providing
reasons why a supporting disclosure does not enable a claim. In re Marzocchi, 439
F.2d 220, 223, 169 USPQ 367, 369 (CCPA 1971). In this regard we direct the
examiner’s attention to the courts statements in Atlas Powder Co. v. E.I. DuPont De
Nemours & Co., 750 F.2d 1569, 1576-77, 224 USPQ 409, 414 (Fed. Cir. 1984)
that:
Even if some of the claimed combinations were inoperative,
the claims are not necessarily invalid. “It is not a function of the
claims to specifically exclude ... possible inoperative
substances ....” In re Dinh-Nguyen, 492 F.2d 856, 859-59, 181
USPQ 46, 48 (CCPA 1974)(emphasis omitted). Accord, In re
Geerdes, 491 F.2d 1260, 1265, 180 USPQ 789, 793 (CCPA
1974); In re Anderson, 471 F.2d 1237, 1242, 176 USPQ 331,
334-35 (CCPA 1971). Of course, if the number of inoperative
combinations becomes significant, and in effect forces one of
ordinary skill in the art to experiment unduly in order to practice
the claimed invention, the claims might indeed be invalid. See,
e.g., In re Cook, 439 F.2d 730, 735, 169 USPQ 298, 302
(CCPA 1971).
On this record, the examiner has limited the scope of appellants’ generic
invention to AIDS, malaria and cancer. In response to appellants’ citation to prior
art supporting the scope of their claims, the examiner argued (Answer,
that “the scope of enablement is not met, for the recitation of preventing cancer or
infections, such as HIV or malaria as exemplified.”
In our opinion, the examiner failed to provide the evidence necessary to
demonstrate that appellants’ disclosure does not enable their claimed invention.
While some of the claimed combinations may be inoperative, the examiner failed to
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