Appeal No. 2003-0936
Application No. 09/532,806
invention” (EA 3), the test the examiner used to determine
compliance with the written description requirement of the first
paragraph of Section 112, is not the gauge for compliance. As the
court instructs in Enzo Biochem Inc. v. Gen-Probe Inc., 296 F.3d.
at 1330, 63 USPQ2d at 1617:
A showing of “possession” is ancillary to the statutory
mandate that “[t]he specification shall contain a written
description of the invention,” and that requirement is
not met if, despite a showing of possession, the
specification does not adequately describe the claimed
invention.
Accordingly, the examiner erred in rejecting Claims 1, 4-54,
and 85-113 for noncompliance with the written description
requirement of 35 U.S.C. § 112, first paragraph.
2. Rejection for nonenablement
The examiner’s rejection of Claims 1, 4-54, and 85-131, all
claims pending in this application, for noncompliance with the
enablement requirement of 35 U.S.C. § 112, first paragraph,
is an entirely distinct issue. At the onset, appellants’ own
specification teaches that: (1) the art is unpredictable, and
(2) a considerable amount of experimentation may be required to
enable persons skilled in the art to make and use the full scope
of the subject matter claimed; yet the kind and amount of
experimentation required to enable one skilled in the art to make
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