Appeal No. 2005-0908 Page 8
Application No. 09/261,329
Id.
Appellants argue that the specification discloses a large number of
modified cellulases and “illustrates how the cellulases are made and used.”
Appeal Brief, page 9. We agree.
“[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). “[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.” Id. at
224, 169 USPQ at 370.
The examiner argues that the specification teaches the structure of only a
single representative species of the genus encompassed by the claims, but, as
noted above, the specification provides examples of mutations in tables 4-6
found at pages 28-35 of the specification. The examiner does not supply any
evidence or reasoning why the specification does not enable those disclosed
mutations.
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