Appeal No. 1999-1245
Application No. 08/245,282
Pharmaceutical Co., 927 F.2d. 1200, 1212-14, 18 USPQ2d 1016, 1026-
28 (Fed. Cir.), cert. 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 the present case, it is the examiner’s position that the specification, while
being enabling for in vitro methods of inhibiting D-3 phosphoinositides in T-cells, does
not reasonably provide enablement for in vivo methods of inhibiting D-3 phospho-
inositides. The examiner argues that the specification does not enable any person
skilled in the art to which it pertains, or with which it is most nearly connected, to make
and use the invention commensurate in scope with these claims. Answer, page 6.
The examiner finds that claim 46, when read in light of the specification, clearly
reads on in vitro, ex vivo and in vivo methods of modulation (see specification page 7,
7
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