Appeal No. 1999-1407
Application No. 08/295,744
the procedures of the specification, and no evidence that such compounds even
exist….’” As appellants emphasize (Reply Brief, page 3, n. 1) “there was
‘considerable evidence’ in Morton ‘showing that those skilled in the art could not
make the claimed compounds.” As discussed, supra, there is no such evidence
present on this record.
In our opinion, for the reasons set forth above, the examiner failed to present
the evidence necessary to meet his burden of proving that the claimed invention is
not adequately enabled by the description of the invention provided in appellants’
specification. Accordingly, we reverse the rejection of claims 1-40 and 59-68 under
35 U.S.C. § 112, first paragraph.
We recommend the examiner review Enzo Biochem, Inc. v. Calgene, Inc.,
188 F.3d 1362, 52 USPQ2d 1129 (Fed. Cir. 1999), since the court provided a
model analysis of enablement issues and illustrated the type of fact finding which is
needed before one is in a proper position to determine whether a given claim is
enabled or non-enabled. In addition, we remind the examiner that in satisfying his
burden under 35 U.S.C. § 112, first paragraph, it is impermissible to pick and
choose from any one reference only so much of it as will support a given position to
the exclusion of other parts necessary to the full appreciation of what such
reference fairly suggests to one skilled in the art. Compare In re Wesslau, 353 F.2d
238, 241, 147 USPQ 391, 393 (CCPA 1965); In re Mercer, 515 F.2d 1161, 1165-
66, 185 USPQ 774, 778 (CCPA 1975).
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