Appeal No. 1999-1231 Page 7
Application No. 08/709,554
[A] specification disclosure which contains a teaching of the manner and
process of making and using the invention in terms which correspond in
scope to those used in describing and defining the subject matter sought
to be patented must be taken as in compliance with the enabling
requirement of the first paragraph of ' 112 unless there is reason to doubt
the objective truth of the statements contained therein which must be
relied on for enabling support.
In re Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA 1971). Moreover,
[I]t is incumbent upon the Patent Office, whenever a rejection on this
basis is made, to explain why it doubts the truth or accuracy of any
statement in a supporting disclosure and to back up assertions of its own
with acceptable evidence or reasoning which is inconsistent with the
contested statement. Otherwise, there would be no need for the applicant
to go to the trouble and expense of supporting his presumptively accurate
disclosure.
Id. at 224, 169 USPQ at 370.
In our view, the evidence or reasoning advanced by the examiner amounts to
unsupported assertions inadequate to outweigh the evidence of appellants=
Apresumptively accurate disclosure.@ On this record, we hold that the examiner has
failed to establish that the claimed subject matter is non-enabled. Accordingly, the
rejection of claims 1 through 17 under the first paragraph of 35 U.S.C. ' 112 is
reversed.
Indefiniteness
According to the examiner, Ait is not apparent as to what is exactly meant by the
phrase >administering to said animal a vector adapted to express [a] gene=@ in claims 1
and 17 because Athere is no indicated effect upon the animal (i.e., phenotypic change
or a therapeutic effect) from the expression of the gene.@ Examiner=s Answer, page 14.
In our view, the phrase is not indefinite when read in conjunction with the clause that
recites that Aexpression of the gene treats a pathophysiological state.@ While the claims
are broad, A[b]readth is not indefiniteness.@ In re Gardner, 427 F.2d 786, 788, 166
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