Appeal No. 1999-1703
Application No. 08/313,194
determine whether the examiner has met his burden of proof by advancing acceptable
reasoning inconsistent with enablement. Factors to be considered by the examiner in
determining whether a disclosure would require undue experimentation have been
summarized by the board in Ex parte Forman, [230 USPQ 546, 547 (BdPatAppInt 1986)].
In our view, the examiner has failed to establish a prima facie case of lack of
enablement by advancing acceptable reasoning inconsistent with enablement, such as
providing evidence that there are various unrelated compounds which are classified as
known aldose reductase inhibitor or hypoglycaemic agents and that those of skill in the art
would not readily understand which species would have the claimed effect. The examiner
has failed to enumerate and analyze the relevant Forman factors to determine whether the
disclosure would require undue experimentation on the part of one of ordinary skill in the
art. Thus, the examiner has failed to meet the burden of putting forward evidence
inconsistent with enablement. Accordingly, the rejection of claim 13 for lack of enablement
is reversed.
CONCLUSION
The rejection of claims 1-5 and 13 under 35 U.S.C. § 103(a) as obvious over
applicants' admissions (specification pages 1-3) in view of Bagley is reversed. The
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