Appeal No. 94-2006
Application 07/586,317
In considering the rejection, it is important to note that the examiner has not raised any
question in regard to the ability of a person skilled in the art to physically make truncated
aphIV genes in order to evaluate such products to determine whether they would be
functional as required by the claims on appeal. Rather, the examiner has only questioned
the ability of a person skilled in the art to “evaluate a multitude on non-exemplified terminal
or internal deletions” of the aphIV gene. However, in raising this issue the examiner has
not relied upon any evidence which allows one to reasonably conclude that such an
evaluation would be considered “undue experimentation.”
As set forth above, the test for “undue experimentation” is not merely quantitative. What
the examiner needed to have done in this case is to evaluate the prior art as of the
effective filing date of this application in light of the disclosure of this application and
determine the ability of workers in this field to identify functional portions of enzymes. It is
evidence such as this which the examiner needs to rely upon, not the unsupported
generalizations set forth in the statement of the rejection.
We have considered the Shillito declaration, but do not find that it supports the
examiner's position. The purpose of the Shillito declaration was to establish that there was
a degree of unpredictability in extrapolating successful results in developing
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