Appeal No. 2001-0121 Page 6
Application No. 08/212,185
of the invention, the state of the prior art, the relative 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. In re
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. The burden of proof does not shift to appellant until the examiner
first meets her burden. Id., 439 F.2d at 223-224, 169 USPQ at 369-370. We
recommend that the examiner review Enzo Biochem, Inc. v. Calgene, Inc., 188
F.3d 1362, 52 USPQ2d 1129 (Fed. Cir. 1999), wherein our appellate reviewing
court provided a model analysis of enablement issues and illustrated the type of
fact finding which is needed before one is in a proper position to determine
whether a given claim is enabled or non-enabled.
For the reasons set forth above, we are compelled to reverse the rejection
of claim 96-103 under 35 U.S.C. § 112, first paragraph.
THE REJECTION UNDER 35 U.S.C. § 102:
According to the examiner (Answer, page 6), Decker “disclose assays in
which binding of activated RRFs to DNA added to cellular extracts was
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