Appeal No. 1999-1427
Application No. 08/372,429
mouse, a model which is not receptive to infection by the pathogen, to protectivity
in any mammalian host against any pathogen.” Id.
“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, 27 USPQ2d 1510, 1513 (Fed.
Cir. 1993). “[A] specification disclosure which 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 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.” In re
Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA 1971), emphasis in
original.
In this case, the specification contains a working example (pages 29-34)
that appears to teach the “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.
That is, the working example teaches a method of inducing a mucosal immune
response by mucosal administration of antigen-encoding DNA complexed with a
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