Appeal No. 2001-1970 Page 15
Application No. 08/260,190
of the evidence of record must be considered in deciding whether the rejection is
still viable. In this case, Appellants provided evidence showing that those skilled
in the art would have viewed the guidance provided by the specification and the
state of the art differently than the examiner viewed it. At that point, it was
incumbent on the examiner, if he decided to maintain the rejection, to explain
why a hypothetical “person of ordinary skill” was more likely to share his view of
the evidence than that of Appellants’ declarant. That was not done.
Thus, we conclude that the examiner has not shown that the amount of
experimentation required to practice the instant claims would have been
considered undue by those skilled in the art of antisense methods. The rejection
for nonenablement is reversed.
Other Issues
As noted above (see footnote 4), we take no position on whether the
instantly claimed invention would have been enabled by the disclosure in this
application’s parent or grandparent applications, combined with the state of the
art in 1993 or 1992. Thus, if intervening prior art exists that would anticipate or
render obvious the instant claims, the examiner should determine whether the
instant claims are entitled to the benefit of the earlier-filed applications under
35 U.S.C. § 120. That is, the examiner should determine the effective filing date
of the instant claims. If the effective filing date is later than any prior art that
would anticipate the claims or render them obvious, a rejection under 35 U.S.C.
§ 102 or 35 U.S.C. § 103 may be appropriate.
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