U.S. Court of Appeals, Federal Circuit
February 10, 1999
IN RE LINDA P. THORNE, RICHARD W. ARMENTROUT AND THOMAS J. POLLOCK,
Before Plager, Rader, and Bryson, Circuit Judges.
The opinion of the court was delivered by: Per Curiam.
(Serial No. 07/841,730)
Linda P. Thorne, Richard W. Armentrout, and Thomas J. Pollock petition for review of a decision by the Board of Patent Appeals and Interferences ("Board"), rejecting claims 1 and 2 of patent application Serial No. 07/841,730 as non-enabled under 35 U.S.C. § 112, para.1, see In re Thorne, Appeal No. 95-0452 (Jan. 13, 1998) (on reconsideration). The application claims cover a method for obtaining a biologically pure culture strain of a fungus which produces a high molecular weight, non-pigmented polysaccharide, pullulan. Although we disapprove of one ground for rejection offered by the Board, we affirm on the other ground.
We have jurisdiction to hear this appeal under 28 U.S.C. § 1295(a)(4)(A) (1994). Enablement is a question of law over which we have plenary review. See In re Vaeck, 947 F.2d 488, 495, 20 USPQ2d 1438,1444 (Fed. Cir. 1991). We review the factual findings underlying the legal Conclusion of enablement for clear error. See id.
The Board had two bases for rejecting claims 1 and 2 of patent application Serial No. 07/841,730 as non-enabled under 35 U.S.C. § 112, para.1. One basis for rejection was due to the fact that the written description describes two process modifications that produce greater yields of high molecular weight pullulan, but the claims did not recite these modifications, which the Board deemed to be essential to practicing the claimed invention. After a careful review of the record on appeal, we conclude that the Board did not err in its scope of enablement rejection.
We cannot agree, however, with the Board's second basis for rejecting the claims for lack of enablement. The Board found that the written description failed to enable the claimed process because there was no indication of a numerical cut-off for pullulan viscosity in the process of strain selection. This Conclusion is puzzling in light of the fact that the Board had previously accepted the linear relationship between culture viscosity and pullulan molecular weight. [A4]. The application's written description discloses equations to calculate the relationship [A58], which suffice to select for cultures producing the desired size of pullulan using viscosity measurements.