Appeal 2007-2681
Application 10/680,676
We reverse the rejection of claims 1-14 for lack of adequate written
description because the Examiner has not adequately explained why the
Specification’s disclosure does not satisfy that requirement of 35 U.S.C.
§ 112, first paragraph. Whether it satisfies the enablement requirement of
that paragraph is a separate issue, to which we now turn.
4. ENABLEMENT
Claims 1-14 also stand rejected under 35 U.S.C. § 112, first
paragraph, as nonenabled. The Examiner relies in part on the same
reasoning used to support the written description rejection – after explaining
the rejection for lack of adequate description, the Examiner concludes that
[i]t follows logically that the entire claimed invention has not
been enabled by the instant specification because applicant has
not taught how to apply the instant invention such that one of
skill in the art could predict using applicant’s classification
model . . . whether or not any embryo would germinate or have
one of the other “characteristics” as in claim 14.
(Answer 8.) The Examiner also argues that the “specification has not
enabled the use of ‘any portion thereof’ an embryo as the means for creating
a classification model” (id.).
Although we have some quibbles, we agree with the thrust of the
Examiner’s reasoning and his conclusion that the Specification does not
enable practice of the full scope of the claimed method without undue
experimentation.
First, the quibbles: the Examiner has not adequately supported his
conclusion that more than routine experimentation would be required to use
the claimed method to classify embryos on the basis of germination
potential. The Examiner has acknowledged that “[u]sing morphology as a
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