Appeal No. 2002-1926 Page 4
Application No. 08/693,353
1988). Among these considerations are the so-called Wands factors, including “(1) the
quantity of experimentation necessary, (2) the amount of direction or guidance
presented, (3) the presence or absence of working examples, (4) the nature of the
invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth of the claims.” Id.
Appellants argue that “nowhere in the rationale advanced in support of the
enablement rejection has the Examiner set forth why the skilled person having
appellants’ disclosure in-hand would have to engage in undue experimentation to
achieve success or otherwise practice the invention as broadly as claimed with
[Micrococcus varians] strains other than the deposited strains [CNCM I-1586 and
CNCM I-1587].” (Brief, page 9).
In response, the examiner maintains that (Answer, pages 7-8)
[t]he determination of undue experimentation was based on 1) the breadth
of the claims, 2) the available art which observed no strains of
Micrococcus varians with bacteriostatic activity against Listeria, 3) the
disclosure of only two strains which display the requisite activity and but a
single bactericidal protein and 4) the lack of guidance about a) where or
how one might isolate other naturally occurring strains which would be
expected to show bacteriostatic activity against Listeria and b) structural
features expected to be held in common with other bacteriocins of
Micrococcus varians.
Nevertheless, we agree with appellants that the reasons given by the examiner
are insufficient to establish that “the skilled person would have to engage in undue
experimentation to make and use and achieve success with strains other then the
deposited strains.” Brief, page 11.
Independent claim 23 is directed to a process of preparing a bacteriocin-
containing product from Micrococcus varians, wherein the bacteriocin “has agar well
incubation test activity against . . . Listeria monocytogenes.” Claims 36, 38 and 40,
which depend directly or indirectly from claim 23, are product by process claims.
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