Appeal No. 1999-0123
Application No. 08/406,239
In this case the examiner failed to analyze the claimed invention with
reference to the factors set forth in Wands. In addition, the examiner failed to
provide any support upon which to base his opinion that undue experimentation
would be required to practice the invention. Instead, the examiner merely provides
conclusory statements, such as “a number of types [sic] of hydrolytic enzymes are
contemplated but the specification is not enabling for all of them. Many would not
likely work in the claimed invention…” and “inhibitors are contemplated but the
specification does not teach how to perform the assays for all the inhibitors”
(Answer, page 11).
As set forth in In re Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369
(CCPA 1971) it is “incumbent upon the Patent Office, whenever a rejection on this
basis is made, to explain why it doubts the truth or accuracy of any statement in a
supporting disclosure and to back up assertions of its own with acceptable
evidence or reasoning which is inconsistent with the contested statement.” On this
record the examiner has merely asserted that due to the large number of
embodiments encompassed by the claimed invention, many would not likely work in
the claimed invention. In addition, with regard to the examiner’s concern that the
claimed invention includes inoperative embodiments, we direct the examiner’s
attention to Atlas Powder Co. v. E.I. DuPont De Nemours & Co., 750 F.2d 1569,
1576-77, 224 USPQ 409, 414 (Fed. Cir. 1984):
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-
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