Appeal No. 2005-1383
Application No. 09/364,847
withdrawing the enablement rejection, the examiner appears to have agreed with the
appellants that one skilled in the art would readily recognize the PHA biosynthetic
enzymes within each of the claimed classes of enzymes based on amino acid
sequences known in the art. Id., p. 8. We recognize that these arguments were made
in response to the enablement rejection, and that our appellate reviewing court has
consistently held that enablement and description are two separate requirements.2
University of Rochester v. G.D. Searle & Co., Inc., 358 F.3d at 921; Enzo Biochem, Inc.
v. Gen-Probe Inc., 323 F.3d at 963. However, we point out that “a recitation of how to
make and use an invention across the full breadth of the claim is ordinarily sufficient to
demonstrate that the inventor possesses the full scope of the invention and vice versa.”
LizardTech Inc., v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1343, 76 USPQ2d
1724, 1732 (Fed. Cir. 2005). Having agreed with the appellants that there was no
problem with the scope of the claims with respect to enablement, and that one skilled in
the art could readily obtain or construct the enzymes encompassed by the claims, the
examiner is in a poor position to argue that the specification fails to provides an
2 We point out that the comingling of the enablement and written description issues is
reflected in the examiner’s arguments. That is, the examiner argues that the
specification fails to provide an adequate written description of the claimed invention
because “the structures of all species encompassed by the recited genera of enzymes
is [sic, are] unpredictable.” Answer, p. 6. Unpredictability is a factor which is
considered in determining whether the specification would have enabled one skilled in
the art to make and use the claimed invention without undue experimentation. See, In
re Wands, 858 F.2d 731, 736-37, 8 USPQ2d 1400, 1404 Fed. Cir. 1988). Thus, the
examiner’s arguments in this regard are not appropriate in the context of the written
description rejection.
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