Appeal No. 2001-2316 Page 6
Application No. 08/187,879
invention is not adequately enabled by the description, our appellate reviewing
court has outlined a number of factors to consider. As set forth in Wands, the
factors to be considered in determining whether a claimed invention is enabled
throughout its scope without undue experimentation include the nature of the
invention, the breadth of the claims, the state of the prior art, the relative skill of
those in the art, the predictability or unpredictability of the art, the quantity of
experimentation necessary, the amount of direction or guidance presented, and
the presence or absence of working examples.
On this record, the examiner has addressed these factors and found that
they weight in favor of nonenablement. For the reasons discussed below, we
agree.
I. The nature of the invention:
As appellants disclose (specification, page 2), “[t]he present invention
relates to the use of DNA transcription units for raising immune responses.” In
addition, appellants disclose (specification, page 3), “DNA transcription units
introduced by the present method can be used to express any antigen encoded
by an infectious agent, such as a virus, … as well as antigenic fragments and
peptides that have been experimentally determined to be effective in immunizing
an individual against infection by a pathogenic agent.”
II. The breadth of the claims:
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