Appeal No. 2000-0600 Page 5
Application No. 08/642,268
skill of those in the art, the predictability or unpredictability of the art, and the breadth
of the claims.
We find no analysis of the Wands factors by the examiner. Instead, we find
only the examiner’s unsupported conclusions as to why the specification does not
enable the claimed invention. We remind the examiner that nothing more than
objective enablement is required, and therefore it is irrelevant whether this teaching
is provided through broad terminology or illustrative examples. Marzocchi, 439 F.2d
at 223, 169 USPQ at 369. In the absence of a fact-based statement of a rejection
based upon the relevant legal standards, the examiner has not sustained her initial
burden of establishing a prima facie case of non-enablement. As set forth by
appellants’ (Brief, page 7):
A disclosure which contains representative examples which provide
reasonable assurance to one of ordinary skill in the art that the
compounds falling within the scope of the claim can be made and
possess utility is all that is required, absent any reasons given as to
why the statements made in the specification are not accurate.
We agree. The burden of proof does not shift to appellant until the examiner
first meets her burden. Marzocchi, 439 F.2d at 223-224, 169 USPQ at 369-370.
On this record, the examiner has not met her burden.
Accordingly, we reverse the examiner’s rejection of claims 1, 2, 5-11, and
13-19 under 35 U.S.C. § 112, first paragraph.
Claims 7-11 and 18-19:
According to the examiner (Answer, page 5) the “[s]pecification does not
adequately teach one ‘how to use’ the instant compounds for all disorders
apparently embraced by the method claims.” The examiner finds (Answer, page 5)
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