Appeal No. 2001-1133 3
Application No. 09/014,806
under 35 U.S.C. § 112, first paragraph, for failing to enable any person skilled in the art
to make and use the invention.
OPINION
We have carefully considered all of the arguments advanced by the appellants and
the examiner and agree with the appellants that the rejections of the claims under §§ 112
and 103(a) are not well founded. Accordingly, we reverse these rejections.
The Rejection under § 112
We turn first to the examiner’s rejection under the first paragraph of 35 U.S.C.
§ 112, first paragraph, on the grounds of lack of enablement. When rejecting a claim
under the enablement requirement of section 112, the PTO bears the initial burden of
setting forth a reasonable explanation as to why it believes the scope of protection provided
by the claimed subject matter is not adequately enabled by the description of the invention
provided in the specification of the application. This includes providing sufficient reasons
for doubting any assertions in the specification as to the scope of enablement. If this
burden is met, the burden then shifts to the appellants to provide suitable proofs that the
specification is enabling. In re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510,
1513 (Fed. Cir. 1993); In re Marzocchi, 439 F.2d 220, 223-24, 169 USPQ 367,
369-70 (CCPA 1971).
The examiner’s position is that the claimed subject matter is not enabled in the
specification, because the original specification provided that the only concentrations given
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