Ex parte Hicks

Informative decision only: persuasive authority, not binding precedent. When an examiner rejects claims under § 112, first paragraph, for lack of enablement of full scope, the examiner bears the burden of a prima facie case weighing the Wands factors, and cannot rely on the lack of working examples or on possible inoperative embodiments alone, without evidence or reasoning that undue experimentation is required. Likewise, under § 112, second paragraph, the examiner must establish why a skilled artisan would not understand the metes and bounds of terms such as "substituted hydrocarbyl" or "taken together may form a ring" when read in light of the specification's definitions, and enablement and definiteness concerns must not be conflated. No prior precedent directly addressed this issue in the text; the decision applies existing Federal Circuit and CCPA law rather than modifying a named Board decision. For the examiner, a broad genus rejection resting on missing working examples and an unsupported assertion about the breadth of the claims will not sustain a prima facie case, and evidence submitted by an appellant cannot be dismissed without rebuttal. For applicants, Markush-style chemical claims with functional-group and ligand variables can be defended by pointing to specification definitions and guidance, art-known synthesis evidence such as a literature search, and the principle that inoperative embodiments do not defeat enablement. The Board relied on In re Alton, In re Vaeck, In re Wands, Atlas Powder, In re Angstadt, In re Cook, LizardTech, Miles Laboratories and Hybritech. LEGAL TEST OR STANDARD: Enablement requires that the specification teach those in the art to make and use the invention without undue experimentation, determined by weighing the Wands factors: (1) the quantity of experimentation necessary to practice the invention, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims. For definiteness, the test is whether one skilled in the art would understand the bounds of the claim when read in light of the specification, and whether the claims reasonably apprise those skilled in the art and are as precise as the subject matter permits. The examiner bears the burden of a prima facie case. TRIGGERING FACTS: Claims 23-26 to a nickel-complex compound of formula (II) with variable hydrocarbyl, substituted hydrocarbyl and functional-group substituents and variable ligands were rejected under § 112, first paragraph, as not enabled for full scope, because working examples covered only a narrow subset, and under § 112, second paragraph, over the terms "substituted hydrocarbyl" and "taken together may form a ring." The specification defined "functional group" and "substituted hydrocarbyl" and described the polymerization process conditions, and Appellants submitted a Chemical Abstracts search showing synthesis of substituted aminotropones was known. The Examiner offered no evidence or reasoning of undue experimentation beyond the absence of working examples. KEY QUOTE: "Initially, we note that the lack of working examples, in and of itself, is not fatal to a finding of enablement." (p. 5) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. PRACTICE TIP: In an appeal brief against a full-scope enablement or indefiniteness rejection, argue that the examiner failed to make a prima facie case: walk through the Wands factors, point to the specification's express definitions and guidance, and submit evidence that the synthesis is known in the art; as an examiner, do not rest on missing working examples or conflate enablement with definiteness.