Appeal No. 2003-1126 Page 12
Application No. 08/444,285
enable the method of producing the product. The method of making the product
has a use beyond that of merely the production of the product; it also
encompasses the use of the product itself. Therefore, if the method of making
the product is enabled, the product itself is enabled. Because the examiner does
not question that the method of making the product as claimed in the ’191 patent
is not enabled to the full scope of the claims, she cannot reasonably assert that
the instantly pending product claims, which are more limited in scope than the
allowed claims, are not enabled by the instant specification, and the rejection is
reversible on those grounds alone.
CONCLUSION
Because the examiner failed to establish a prima facie case that the
specification fails to enable the full scope of the claimed subject matter, the
rejection under 35 U.S.C. § 112, first paragraph, is reversed. The obviousness-
type double patenting rejection of the pending claims, in the absence of a
terminal disclaimer, is affirmed
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