Appeal No. 1999-1434
Application No. 08/307,044
Here, the specification discloses that the claimed method can be practiced
with “[m]urine antibody against 17-1A antigen” generally. See page 4, last
paragraph. That method is presumed to be enabled by the specification; the
burden is on the examiner to show otherwise.
“When rejecting a claim under the enablement requirement of section 112,
the PTO bears an initial burden of setting forth a reasonable explanation as to
why it believes that the scope of protection provided by that claim is not
adequately enabled by the description of the invention provided in the
specification of the application; this includes, of course, providing sufficient
reasons for doubting any assertions in the specification as to the scope of
enablement. If the PTO meets this burden, the burden then shifts to the
applicant to provide suitable proofs indicating that the specification is indeed
enabling.” In re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed.
Cir. 1993). “[It] 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.”
Marzocchi, 439 F.2d at 224, 169 USPQ at 370.
In this case, the examiner has pointed to no evidence in support of her
position that undue experimentation would be required to practice the claimed
5
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007