Appeal No. 2002-1371 Page 3
Application No. 08/474,796
DISCUSSION
The examiner’s statement of the rejection (Answer, page 3) is ambiguous;
while the examiner begins with the phrase “while being enabling for …” the
examiner makes no statement of what the specification is not enabling for. In
addition, we recognize appellant’s argument (Brief, page 20):
there already has been a determination that scope of enablement
is correct vis-à-vis [a] number of treatments and microorganism
treating agent, from allowance of [c]laims 77-85 and 90-92.
The only motivation for taking a contrary position would be a
disbelief that the invention does not work for certain conditions.
This is not a proper motivation and in any event should not apply to
[c]laims 27-34, 36-43, 72 and 73 since very broad coverage on
chronic gastrointestinal disorder for the same treatment, has been
agreed as being enabled and operative, by allowance of [c]laim 90.
While the examiner recognizes (Answer, pages 8-9) appellant’s argument
regarding claim 90 the examiner fails to explain the apparent inconsistency in
indicating that generic claim 90 is allowable but that a species within that generic
claim (e.g., claim 27) is not enabled by the specification. Accordingly, we vacate
the rejection under 35 U.S.C. § 112, first paragraph, and remand the application
to the examiner for further consideration.
We also recognize the questions posed by the examiner. Answer, page
7. This series of questions, however, is not the type of fact-based reasoned
analysis required to support a proper conclusion of non-enablement. As set forth
in In re Wands, 858 F.2d 731, 735, 736-37, 8 USPQ2d 1400, 1402, 1404 (Fed.
Cir. 1988), the factors to be considered in determining whether a claimed
invention is enabled throughout its scope without undue experimentation include
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