Reported on the test: An application had claimed a chemical that was useful for relieving headaches. The application did not disclose how to make said chemical. Examiner rejects claim on enablement and written description. Applicant shows that a PHOSITA would know how to make said chemical and points formulas and technical data in the spec.
A. Examiner should withdraw both rejections in light of applicant’s submissions.
B. Examiner should withdraw enablement rejection, but keep written description as the application does not show how to make said chemical.
C. Examiner should withdraw both rejections as neither were proper to begin with.
Look at 2164.04 last 2 paragraphs “In accordance with the principles of compact prosecution, if an enablement rejection is appropriate, the first Office action on the merits should present the best case with all the relevant reasons, issues, and evidence so that all such rejections can be withdrawn if applicant provides appropriate convincing arguments and/or evidence in rebuttal. Providing the best case in the first Office action will also allow the second Office action to be made final should applicant fail to provide appropriate convincing arguments and/or evidence…. In other words, the examiner should always look for enabled, allowable subject matter and communicate to applicant what that subject matter is at the earliest point possible in the prosecution of the application.
The applicant will probably need to show evidence to rebut other than an argument. But if the evidence of Phosita knowledge is available the rejections should be removed. I would think the key is in the rejection language.
MPEP 2161 “the Federal Circuit reaffirmed that under 35 U.S.C. 112, first paragraph, the written description requirement is separate and distinct from the enablement requirement and gave an example thereof.). An invention may be described without the disclosure being enabling (e.g., a chemical compound for which there is no disclosed or apparent method of making), and a disclosure could be enabling without describing the invention (e.g., a specification describing a method of making and using a paint composition made of functionally defined ingredients within broad ranges would be enabling for formulations falling within the description but would not describe any specific formulation).”
This means that by showing that a Phosita can make and use the chemical, the enablement requirement is satisfied and so that rejection should be dropped. However, the above facts do not tell us if the written disclosure requirement is satisfied, so that rejection may stay. So B is the correct answer.