Appeal No. 1997-2528
Application No. 07/810,908
of § 112 requires that the scope of protection sought in a claim bear a reasonable
correlation to the scope of enablement provided by the specification.
In addition, analysis of whether the claims under appeal are supported by an
enabling disclosure requires a determination of whether that disclosure contains
sufficient information regarding the subject matter of the appealed claims as to enable
one skilled in the pertinent art to make and use the claimed invention. In order to
establish a prima facie case of lack of enablement, the examiner must provide a
reasonable explanation as to why the scope of protection provided by a claim is not
adequately enabled by the disclosure. In re Wright, 999 F.2d 1557, 1561-62, 27
USPQ2d 1510, 1513 (Fed. Cir. 1993); In re Morehouse, 545 F.2d 162, 165, 192 USPQ
29, 32 (CCPA 1976). 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.
The examiner argues that the claimed invention is not enabled by the
specification because there is no disclosure for the use of either cell lysate or individual
proteins in a diagnostic kit or method for the detection of anti-HIV-2 antibodies.
Answer, page 3. The examiner also argues that the proteins are not enabled for use in
the various assay formats.
In the instant case, the examiner has not presented a reasoned analysis of the
state of the prior art in regard to immunoassay formats and methods for the detection of
HIV as claimed in the instant application. It appears that the examiner considered the
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