Appeal No. 2001-1905 Page 2
Application No. 08/245,827
The references relied upon by the examiner are:
BIOCHEMISTRY (Lehninger), pp. 795 (Lehninger ed., 2nd ed., Worth Publishers,
Inc., N.Y., 1975)
Sucher et al. (Sucher), “Rapid Communication: Redox Modulatory Site of the
NMDA Receptor-Channel Complex: Regulation by Oxidized Glutathione,” J.
Neuroscience Research, Vol. 30, pp. 582-591 (1991)
Jackowski, “Review Article: Neural injury repair: hope for the future as barriers to
effective CNS regeneration become clearer,” British J. Neurosurgery, Vol. 9,
pp. 303-317 (1995)
GROUND OF REJECTION
Claims 11 and 13-15 stand rejected under 35 U.S.C. § 112, first
paragraph, as being based on an insufficient disclosure to support or enable the
scope of the claimed invention.
We reverse.
DISCUSSION
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):
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