Appeal No. 95-1364
Application No. 07/919,287
would enable the skilled artisan to identify individuals in need of such preventive
treatment. The instant invention proposes treating viral etiological agents
embodying "a fusion protein which has a native, non-fusogenic conformation and
a second, fusogenic conformation", yet fails to fails to [sic] provide information that
would enable the skilled artisan to identify the specific etiological agents treatable
by the claimed antiviral method.
Examiner’s Answer p. 6-7. However, the absence of information from the specification is not a basis,
alone, for concluding that the specification in not enabling. The examiner must also establish that because
of the missing information, one having ordinary skill in the art would not be able to make and use the
claimed invention without undue experimentation. The examiner has not met that burden in this case. The
examiner has not provided any evidence which would allow us to hold that undue experimentation would
be necessary to practice the claimed invention. For all the record shows, the alleged missing information
is within the level of ordinary skill in the art. Such information need not be disclosed in the specification.
In re Buchner, 929 F.2d 660, 661, 18 USPQ2d 1331, 1332 (Fed. Cir. 1991); Lindemannn
Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1463, 221 USPQ 481, 489
(Fed. Cir. 1984). Indeed, the specification preferably omits, that which is well known in the art. Hybritech,
Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384, 231 USPQ 81, 94 (Fed. Cir. 1986), cert.
denied, 480 U.S. 947 (1987); Lindemannn, 730 F.2d at 1463, 221 USPQ at 489.
The rejection of claims 13-15 and 23-30 is reversed.
The rejection of claims 1, 5-9, 12-15, 21, 23-28 and 31-36
The examiner rejects claims 1, 5-9, 12-15, 21, 23-28 and 31-36 under 35 U.S.C. § 112, ¶ 1,
holding that the subject matter is broader than the enabling disclosure. The examiner asserts that the subject
matter of claims 1, 5-9, 12-15, 21, 23-28 and 31-33 are enabled only as to the specific viral etiologic
agents named in the specification. The examiner also asserts that the subject matter of claims 1, 5-9, 12-
15, 21, 23-28 and 31-36 is enabled only as to the specifically named antiviral compounds. Examiner’s
Answer, p. 7.
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