Appeal No. 1997-3378
Application 08/487,946
denied, 502 U.S. 856 (1991); In re Vaeck, 947 F.2d at 496, 20 USPQ2d at
1445. Enablement is lacking in those cases, the court has explained,
because the undescribed embodiments cannot be made, based on the
disclosure in the specification, without undue experimentation. But the
question of undue experimentation is a matter of degree. The fact that some
experimentation is necessary does not preclude enablement; what is
required is that the amount of experimentation “must not be unduly
extensive.” Atlas Powder Co., v. E.I. DuPont De Nemours & Co., 750 F.2d
1569, 1576, 224 USPQ 409, 413 (Fed. Cir. 1984). The Patent and
Trademark Office Board of Appeals summarized the point well when it
stated:
The test is not merely quantitative, since a considerable
amount of experimentation is permissible, if it is merely
routine, or if the specification in question provides a
reasonable amount of guidance with respect to the direction in
which the experimentation should proceed to enable the
determination of how to practice a desired embodiment of the
invention claimed. Ex parte Jackson, 217 USPQ 804, 807
(1982).
In addition, the examiner has failed to fully address the rebuttal argument put forth by
appellants. Appellants indicate that the specification instructs one skilled in the art that the
DADH of the present invention can be isolated from members of the genus Candida, for
example Candida tropicalis and Candida shehatae. Page 11, lines 13-14. The appellants
also argue that the monoclonal antibodies described in the specification reasonably
enable the skilled artisan to screen for and isolate a specific DADH from any source, and
suggests that DADH from other species can be identified and isolated by determining
whether the DADH enzyme can bind to at least one of the present monoclonal antibodies.
Thus, it would appear that the experimentation required to practice the claimed method
within the claim scope would not have amounted to more than simple screening. See,
Tabuchi v. Nubel, 559 F.2d 1183, 1186, 194 USPQ 521, 523 (CCPA 1977); (Claim to a
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