Appeal No. 2006-2644 Page 7
Application No. 10/047,945
Appellants argue that the examiner has not considered all of the Wands factors.
See the Appeal Brief, pages 5-6. Appellants argue that the examiner has improperly
focused on “the credibility of the working examples” (id., page 5) and that “[w]hether or
not the data is believable or credible is a utility issue, not an enablement issue” (id.,
page 8).
We do not find this argument persuasive. A rejection for lack of enablement can
“take[ ] several forms.” In re Cortright, 165 F.3d 1353, 1356, 49 USPQ2d 1464, 1466
(Fed. Cir. 1999). Most commonly, “[t]he PTO will make a scope of enablement rejection
where the written description enables something within the scope of the claims, but the
claims are not limited to that scope.” Id. “On the other hand, if the written description
does not enable any subject matter within the scope of the claims, the PTO will make a
general enablement rejection, stating that the specification does not teach how to make
or use the invention.” Id.
The examiner’s rejection in this case is of the latter type. “The PTO cannot make
this type of rejection, however, unless it has reason to doubt the objective truth of the
statements contained in the written description.” Id. at 1357. 49 USPQ2d at 1466.
As discussed above, the specification itself provides evidence that casts doubt on the
statement that fragments of SEQ ID NO:2 reduce serum levels of IgE: there is no
evidence that LT-10 reduces IgE levels, as opposed to masking IgE from antibody
binding; there is no evidence that the level of IgE measured in saliva corresponds to
that in serum; and there is no evidence that fragments of SEQ ID NO:2 smaller than ten
amino acids have any IgE-binding activity.
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