Appeal No. 94-1483
Application No. 07/695,141
for such doubt does exist, a rejection for failure
to teach how to make and/or use will be proper on
that basis; such a rejection can be overcome by
suitable proofs indicating that the teaching
contained in the specification is truly enabling.
As recognized in Marzocchi, 439 F.2d at 223, 169 USPQ at 370,
the unpredictability of a technical field may "alone be enough
to create a reasonable doubt as to the accuracy of a
particular broad statement put forward as enabling support for
a claim."
The information relied on to establish enablement in this
application includes a single success said to have been
achieved by appellants in obtaining the nucleotide sequence
coding for a fluorescein-specific single chain T-cell
receptor. The following, relatively broad statement is set
forth at page 11, lines 5 through 20 of the specification:
The soluble, single chain T cell receptors of
the present invention may be produced using various
methods. For example, they may be obtained by
synthetic means, i.e., chemical synthesis of the
polypeptide from its component amino acids, by
methods known to those of ordinary skill in the art.
For example, the solid phase procedure described by
Houghton et al., Proc. Natl. Acad. Sci. 82:5135
(1985) may be employed. It is preferred that the
soluble, single chain T cell receptors be obtained
by production in prokaryotic or eukaryotic host
cells expressing a DNA sequence coding for the
single chain T cell receptors as described herein,
or by in vitro translation of the mRNA encoded by
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