Appeal No. 1997-4379
Application No. 08/278,437
Appellants also argue (Appeal Brief, page 7) that:
[T]he breath of the Claims is not overreaching. The Claims
are limited to peptides having about 45 amino acids. A
narrow scope when compared to the 100 amino acids
disclosed in Belinka (U.S. 5,449,761) as discussed above.
Claims 4 and 17 are certainly enabled. Claims 4 and 17
claim the compound octreotide.
In response, the examiner argues (Examiner's Answer, page 10) that:
However, the number of amino acids contained in the
peptide sequence is irrelevant. It cannot be said as matter of
law that 100 or a number of examples are sufficient to
support a claim embracing thousands of compounds. It is
the nature, not the number, of the claimed compounds which
determines the sufficiency of the supporting disclosure.
On reflection, based on a careful review of the record, we find that the examiner
has not provided adequate reasons to doubt the objective truth of statements made in
appellants' specification. The examiner’s arguments are insufficient to establish that
the specification does not enable any person skilled in the art to use the claimed
invention, taking into account the relevant factors set forth in Wands. First, the
examiner's position that the destruction of the disulfide bond results in loss of bioactivity
misapprehends the invention as disclosed and claimed. The purpose of the disulfide
bond is "to insure conformational rigidity" (Specification, page 1). Due to the instability
of this bond in mild reducing conditions (id.), the appellants seek to modify the disulfide
bond in a manner that improves the stability of the compound without loss of
conformation and bioactivity (Specification, page 2).
We are not persuaded by the examiner’s reliance on Mather and Rivier.
According to the examiner, Mather "discloses that octreotide appears to be more
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