Appeal No. 2003-1126 Page 9
Application No. 08/444,285
The panel agrees that the examiner has failed to meet the burden of
establishing a prima facie case that the specification fails to enable the full scope
of the claimed subject matter. The rejection focuses on uses disclosed by the
specification, such as increasing feed utilization and growth rate in food
mammals; increasing feed utilization and milk production in mammals, the
production of meats of altered flavor; and the development of developmental
models to eliminate or diminish genetic diseases. A product, however, need only
enable a single use to enable the product, see MPEP § ___, and as pointed out
by appellants, one of the uses disclosed by the specification is production of a
protein product, see Supplemental Appeal Brief, page 17. The examiner has not
provided evidence to demonstrate that one skilled in the art would not expect the
method to work with mammals other than mice or genes other than the rabbit β-
globin gene.
Moreover, Appellants argue that:
Interestingly, the claims of the ’191 patent are not limited to
methods for making transgenic mice, nor are the claims limited to
making transgenic animals that express a particular gene under the
control of a particular promoter. Therefore, the Office has
previously concluded that Applicants’ specification was enabling for
methods for making transgenic animals much more broadly than
those for which experimental results are provided in the
specification. It is inconsistent for the Office now to assert that
transgenic animals that are made using these methods are not
enabled by the same specification.
Supplemental Appeal Brief, page 16.
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