Appeal No. 1998-1987
Application No. 07/915,783
“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.” In re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513
(Fed. Cir. 1993).
We conclude that this burden has not been met in this case. The
specification exemplifies preparation of plasmodial antigens using the following
non-ionic detergents: n-octyl-β-D-glucopyranoside (pages 20-24), Triton X-100
(pages 27-28), nonanoyl-N-methylglucamide (page 29), and N-heptyl-β-D-
thioglucoside (page 29). The specification discloses testing of the various
antigen preparations for immunoprotective effect and concludes that “active
protective parasite antigens may be recovered following solubilization with
different non-ionic detergents.” Page 31.
Thus, the specification “contains a teaching of the manner and process of
making and using the invention in terms which correspond in scope to those
used in describing and defining the subject matter sought to be patented.”
Marzocchi, 439 F.2d at 223, 169 USPQ at 369. Therefore, it “must be taken as
in compliance with the enabling requirement of the first paragraph of § 112
unless there is reason to doubt the objective truth of the statements contained
therein which must be relied on for enabling support.” Id. The evidence relied on
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