Appeal No. 2001-0407 Page 6
Application No. 08/460,215
apparent effect on expression or function of the PKD1 gene product” (page 7,
lines 20-22). The examiner has not adequately explained why persons skilled in
the art would not recognize in these disclosures a description of the invention
defined by claims 39 and 47.
With respect to enablement, the examiner has provided no analysis or
reasoning to support his position that claims 39 and 47 are not enabled by the
specification. A conclusion of enablement, or lack thereof, can only be reached
after considering a number of factual considerations. See In re Wands, 858 F.2d
731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). Here, the examiner’s rejection
is unsupported by any analysis based on the facts in the record.
The examiner has not carried his burden of showing that claims 39 and 47
are inadequately described or nonenabled by virtue of their recitation of
“intronless” DNA. The rejection of these claims under 35 U.S.C. § 112, first
paragraph, is reversed.
2. Enablement
According to Appellants, the claims do not stand or fall together. See the
Appeal Brief, page 3. However, the only argument that Appellants put forth to
show the separate patentability of the claims is directed to the claimed
compositions (claims 45-47) as compared to the claimed method (claims 37-39).
Since Appellants have not argued the separate patentability of the dependent
claims, claims 38 and 39 will stand or fall with claim 37, and claims 46 and 47 will
stand or fall with claim 45.
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