Appeal No. 2002-1926 Page 3
Application No. 08/693,353
first paragraph of 35 U.S.C. § 112, “because the specification, while being enabling for
Micrococcus varians strains CNCM I-1586 and CNCM I-1587, does not reasonably
provide enablement for bacteriocin . . . production by any other strain of Micrococcus
varians. Answer, page 4. According to the examiner (id., page 5),
Appellants have demonstrated a bacteriocin production by the two strains
named above, but have not shown that other strains of Micrococcus
varians may reliably be used for production of a bacteriocin effective
against Listeria monocytogenes . . . neither of the two (unidentified)
strains of Micrococcus varians that Cantoni et al. tested for bacteriocin
production had activity against Listeria monocytogenes . . . Thus, based
on the art, no other known strain of Micrococcus varians may reliably be
used for production of a bacteriocin effective against Listeria
monocytogenes; likewise, the specification fails to teach other strains that
may be used in the claimed invention.
“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.” In re
Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993). “[T]o be
enabling, the specification of a patent must teach those skilled in the art how to make
and use the full scope of the claimed invention without ‘undue experimentation’” Id. at
1561, 27 USPQ2d at 1513. “That some experimentation may be required is not fatal;
the issue is whether the amount of experimentation is ‘undue.’” In re Vaeck, 947 F.2d
488, 495, 20 USPQ2d 1438, 1444 (Fed. Cir. 1991) (emphasis in original).
“Whether undue experimentation is needed is not a single, simple factual
determination, but rather is a conclusion reached by weighing many factual
considerations.” In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir.
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007