Appeal No. 1999-1245
Application No. 08/245,282
lines 23-35, for example). Answer, page 5. According to the examiner (Answer, page
6):
Appellant’s claimed invention recites the “contacting of the T cell
with an agent which acts intracellularly” to inhibit the production of D-3
phosphoinositides. Thus, the claimed invention encompasses any and all
agents which can act intracellularly to inhibit production of D-3
phosphoinositides. These agents include wortmannin, quercetin, and
herbimycin A (recited in the specification), for example, but also include
antisense to D-3 phosphoinositides, or vectors encoding antisense
transcripts to D-3 phosphoinositides. Appellant’s specification provides
absolutely no guidance to the skilled artisan on appropriate DNA or RNA
sequences which may even be potentially used as the latter agents.
Thus, the examiner concludes that (Answer, page 7):
... the specification fails to provide a single working example for the
numerously claim in vivo embodiments of the claimed invention.
Therefore, in view of the quantity of experimentation necessary to
determine the parameters listed above, the lack of direction or guidance
provided by the specification, the absence of working examples for in vivo
intracellular T cell modulation, the breadth of the claims, and the
unpredictable and undeveloped state of the art with respect to in vivo cell
intracellular transformation with any and all agents, it would have required
undue experimentation for one skilled in the art to practice the claimed
invention.
In our view the examiner has failed to provide sufficient evidence to support a
finding of lack of enablement of the claimed invention. In re Mills, 470 F.2d 649, 651,
176 USPQ 196, 198 (CCPA 1972) holds that “[a]ll the disclosures in a reference must
be evaluated . . . a reference is not limited to the disclosure of specific working
examples.” For example, the specification, pages 11-13, provides detailed disclosure
regarding screening assays for identifying inhibitors and activators of PI3K which can
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