Appeal No. 2001-0693 Page 4
Application No. 08/898,300
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).
The only specific finding made by the examiner which is relevant in considering this
legal standard is found at page 8 of the Examiner's Answer where the examiner states
"without specific guidance on which 9, 10 and 11 amino acid sequences to use for the
peptide membrane forming experiments, a very large amount of peptide sequences
would have to be screened." As seen, the examiner focuses on the amount
of experimentation which may be required instead of explaining why that
experimentation would be undue and not routine. Absent a fact-based explanation from
the examiner as to why the experimentation needed to make and use the claim
embodiments where amphiphilic peptides are needed having the “alternating,
complementary and structural” properties but contain fewer than 12 amino acids, we
hold that the examiner has failed to establish a prima facie case of lack of enablement.
To the extent the examiner may be concerned that the claims may embrace
possibly inoperative embodiments, we point to Atlas Powder Co. v. E.I. du Pont de
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