Appeal No. 1997-2528
Application No. 07/810,908
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, 439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA 1971).
In the present case the examiner has not presented a prima facie case of lack of
enablement which would shift the burden to appellants to provide evidence of
enablement. Although the examiner argues that no literature cited by appellants show
how one of ordinary skill in the art would be able to produce all of the claimed proteins,
isolate them, and use them in a fashion so as to detect antibodies, the consideration of
such literature is not appropriate unless and until the examiner has established a prima
facie case of lack of enablement. Answer, page 5.
In view of the above, the rejection of claims 44-46 for lack of enablement is
reversed.
New grounds of rejection - 37 CFR § 1.196(b)
Under the provisions of 37 CFR § 1.196(b), we enter the following new grounds
of rejection against appellants’ claims 44-46.
35 U.S.C. § 102(a)
Claims 44-45 stand rejected under 35 U.S.C. § 102(a) as anticipated by Clavel.
The examiner previously rejected Claims 44-46 under 35 U.S.C. § 102(b) as
anticipated by Clavel, however, we are unclear on what basis the examiner made this
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