Appeal No. 1998-2010
Application No. 08/542,861
appear to be prophetic, i.e, “the compounds set forth in the examples herein would be
expected to inhibit the HIV enzyme”. Specification, page 92.
In view of the above, we find that the examiner has provided a reasonable
evidentiary basis to question enablement of the use of the claimed compounds and
compositions. Once the examiner has established a reasonable basis to question the
enablement provided for the claimed invention, the burden falls on the appellants to
present persuasive arguments, supported by suitable proofs where necessary, that one
skilled in the art would be able to make and use the claimed invention using the disclosure
as a guide. See In re Brandstadter, 484 F.2d 1395, 1406, 179 USPQ 286, 294 (CCPA
1973).
In response to the examiner’s prima facie case, appellants argue that they need not
exemplify every species encompassed by the claims. Reply Brief, page 13. Appellants
argue that the specification provides numerous representative examples, which together
with the general knowledge in the art provide those of skill in the art with the requisite detail
necessary to make and use appellant’s invention. Id.
It is well settled from Amgen, Inc. v. Chugai Pharmaceutical Co., 927 F.2d 1200, 18
USPQ2d 1016 (Fed. Cir. ), cert. denied, 502 U.S. 856 (1991), that a patent applicant is
entitled to claim an invention generically if the invention is described sufficiently to meet the
requirements of 35 U.S.C. § 112. In Amgen, the applicant claimed erythropoietin (EPO),
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