Appeal No. 2003-0998 Page 5
Application No. 08/676,143
2. Enablement
The examiner rejected all of the claims on appeal for nonenablement. The
examiner acknowledged that the claims were enabled for synthetic receptors
having steroids as templates (or the templates recited in claims 68-71) but held
that the claims were not enabled for synthetic receptors having monocyclic
aliphatic hydrocarbons, polycyclic aliphatic hydrocarbons, or monocyclic
heterocycles as templates. See the Examiner’s Answer, page 4.
The examiner apparently concluded that the specification was deficient in
teaching those skilled in the art both how to make and how to use the claimed
products. With regard to how to make the claimed library, the examiner
considered several of the Wands factors and concluded that making the claimed
products would have required undue experimentation. See the Examiner’s
Answer, pages 5-6. In addition, the examiner concluded that, even assuming
“that one could make synthetic receptor libraries, . . . as encompassed by the
present claims, the specification fails to provide sufficient guidance regarding a
specific, substantial and credible use for a representative sample of such
compounds.” Id., pages 6-8.
Appellants argue that the specification exemplifies compounds having a
monocyclic heterocycle template, as well as compounds having a polycyclic
aliphatic hydrocarbon template. Thus, Appellants assert, “[t]he only template that
is not exemplified is a monocyclic aliphatic hydrocarbon. . . . Appellants submit
that the person of ordinary skill would expect that a genus including monocyclic
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