Appeal No. 2003-1722 Page 6
Application No. 09/041,343
fails to provide sufficient guidance regarding a specific, substantial and credible
use for a representative sample of such compounds.” Id., page 7.
As Appellants note, the initial burden of showing nonenablement is on the
examiner. “[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),
emphasis in original.
We agree with Appellants that the examiner has not carried the initial
burden of showing nonenablement. With regard to making the claimed
receptors, the examiner relied heavily on the assertion that the claims do not
recite a structure for the receptors’ template. See the Examiner’s Answer, pages
6-7. As we have already concluded, however, the claims define the template of
the claimed receptors by means of specific, structural limitations: the template is
defined as a “monocyclic nitrogen heterocycle”; i.e., a single, heterocyclic ring
containing at least one nitrogen atom. The examiner has not adequately
explained why making the claimed receptors, as properly construed, would have
required undue experimentation.
With regard to using the claimed receptors, the examiner cites the
unpredictability of the properties of compounds that have not yet been made, as
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