Appeal No. 2000-0893 Page 8
Application No. 08/392,407
DISCUSSION
The rejection under 35 U.S.C. § 112, first paragraph:
Initially, we recognize and agree with appellants’ statement (Brief, page
14) “that a working example is not required for enablement.” See In re
Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ 561, 563 (CCPA 1982) (working
examples are not required to satisfy section 112, first paragraph.).
The enablement rejection of record is concerned with whether the
specification teaches “the preparation of even one catalytic antibody.” Answer,
page 3. To satisfy the enablement requirement of 35 U.S.C. § 112, first
paragraph, a patent application must adequately disclose the claimed invention
so as to enable a person skilled in the art to practice the invention at the time the
application was filed without undue experimentation. Enzo Biochem, Inc. v.
Calgene, Inc., 188 F.3d 1362, 1371-72, 52 USPQ2d 1129, 1136 (Fed. Cir.
1999). We note, however, that “nothing more than objective enablement is
required, and therefore it is irrelevant whether this teaching is provided through
broad terminology or illustrative examples.” In re Marzocchi, 439 F.2d 220, 223,
169 USPQ 367, 369 (CCPA 1971). As set forth in In re Wright, 999 F.2d 1557,
1561-62, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993):
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.
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