Appeal No. 1997-3535
Application 08/476,394
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. Specification page 11, lines 13-14;
Brief, page 6. 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 method of producing citric acid comprising inoculating a citric acid
accumulating strain and hydrocarbon assimilating strain of a yeast belonging to the genus
Candida, was enabled by specification generally directed to the genus Candida, with no
deposited Candida strains).
The appellants submit that the specific monoclonal antibodies of the present
invention can be used by the skilled artisan to isolate the claimed DADHs without undue
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