Appeal No. 2001-0407 Page 5
Application No. 08/460,215
now claimed and further fails to provide enabling guidance for the
practice of the inventions of claims 39 and 47.
Examiner’s Answer, page 9.
Appellants argue that the specification provides descriptive support for
“intronless” DNA at page 7 and in the original claims, and discloses methods of
deriving (intronless) cDNA from the disclosed genomic DNA. See the Appeal
Brief, pages 7-8.
The examiner bears the burden of showing either lack of enablement or
lack of adequate written description. See In re Wright, 999 F.2d 1557, 1561-62,
27 USPQ2d 1510, 1513 (Fed. Cir. 1993) (“[T]he PTO bears an initial burden of
setting forth a reasonable explanation as to why it believes that the scope of
protection provided by [the] claim is not adequately enabled.”); In re Alton, 76
F.3d 1168, 1175, 37 USPQ2d 1578, 1583 (Fed. Cir. 1996) (The examiner “‘bears
the initial burden . . . of presenting a prima facie case of unpatentability.’ . . .
Insofar as the written description requirement is concerned, that burden is
discharged by ‘presenting evidence or reasons why persons skilled in the art
would not recognize in the disclosure a description of the invention defined by the
claims.’”).
We agree with Appellants that the examiner has not carried his burden in
this case. The specification describes “intronless DNA” (page 7, lines 12-14), it
describes a method of treatment using “[a]ll or part of the normal PKD1 gene”
(page 23, line 11), and it defines a “normal PKD1 gene” to include “alterations in
DNA sequence, whether recombinant or naturally occurring, that have no
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