Appeal No. 2001-0759
Application 08/809,186
to indicate that the “cells” encompassed by the claims are T cells and/or B cells and/or
monocytes. For the reasons herein, it does not appear from the examiner's analysis as
set forth in the examiner's answer, that the examiner ever came to grips with, or
reconsidered the applicability of the lack of enablement rejection in view of this
amendment to claim 1.
Although not explicitly stated in section 112, to be enabling, the specification of a
patent must teach those skilled in the art how to make and use the full scope of the
claimed invention without "undue experimentation." In re Vaeck, 947 F.2d 488, 495, 20
USPQ2d 1438, 1444 (Fed. Cir. 1991); In re Wands, 858 F.2d 731, 737, 8 USPQ2d
1400, 1404, (Fed. Cir. 1988). 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).
In order to establish a prima facie case of lack of enablement, the examiner has
the initial burden to establish a reasonable basis to question the enablement provided
for the claimed invention. See In re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d
1510, 1513 (Fed. Cir. 1993) (examiner must provide a reasonable explanation as to
why the scope of protection provided by a claim is not adequately enabled by the
disclosure). See also In re Morehouse, 545 F2d 162, 192 USPQ 29 (CCPA 1976).
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
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