Appeal No. 2000-0591
Application No. 08/311,291
proper for the PTO to require evidence that such an unprecedented feat has actually
been accomplished” (Id., page 4).
In our view, this is putting the cart before the horse. As stated in In re Marzocchi,
439 F.2d 220, 223, 169 USPQ 367, 369-70 (CCPA 1971):
[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 other words, “[w]hen rejecting a claim under the enablement requirement of
section 112,” it is well settled that “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).
Thus, the threshold issue here is not whether appellants have established that
their disclosure is broadly enabling for the scope of the claims, rather, the issue is
whether the PTO has met its “initial burden of setting forth a reasonable explanation as
to why” it is not. Keeping this in mind, we consider some of the specific issues raised
by the examiner in support of his position.
The examiner argues that “[a]ntiviral agents . . . operate by inhibiting one or more
of the enzymes that are essential for the vital tasks of the virus, such as entering a cell,
or replicating,” but “[viral] families are usually not organized on the basis of their
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