Appeal No. 2003-2146 Page 9
Application No. 09/546,143
patent disclosure need not enable information within the knowledge of an
ordinarily skilled artisan. Thus, a patentee preferably omits from the disclosure
any routine technology that is well known at the time of application.”
Regarding the examiner’s proffer that one skilled in the art would not be
able to prepare “any intermediate having any ‘amino protecting group’,” we
remind the examiner that “[w]hen 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; this includes, of course,
providing sufficient reasons for doubting any assertions in the specification as to
the scope of enablement.” In re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d
1510, 1513 (Fed. Cir. 1993). “[It] is incumbent upon the Patent Office, whenever
a rejection on this basis is made, to explain why it doubts the truth or accuracy of
any statement in a supporting disclosure and to back up assertions of its own
with acceptable evidence or reasoning which is inconsistent with the contested
statement. Otherwise, there would be no need for the applicant to go to the
trouble and expense of supporting his presumptively accurate disclosure.”
In re Marzocchi, 439 F.2d 220, 224, 169 USPQ 367, 370 (CCPA 1971).
In our opinion, the examiner failed to meet his burden of establishing that
appellants’ disclosure does not enable the full scope of the claimed invention.
The test for compliance with the enablement requirement of 35 U.S.C. § 112, first
paragraph, is whether one skilled in the art would have to resort to undue
experimentation in order to practice the invention as broadly as claimed. In
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007