Appeal No. 1995-1162
Application 07/725,943
the basis of the examiner‘s conclusion that the “specification does not provide one of
ordinary skill in the art with the guidance to practice applicants’ invention without undue
experimentation.” Id., sentence bridging pp. 4-5.
In addition, the examiner argues that claim 35 fails to satisfy the requirements of
both the first and second paragraphs of 35 U.S.C. § 112. According to the examiner, the
“Appellants do not provide any guidance as to the meaning of the phrase or what
promoters and proteins are encompassed by the terms.” Answer, p. 5.
In response, the appellants argue that inducible promoters were well known in the
art at the time the application was filed, and they provide five references to support their
position. Brief, pp. 10-11; Exhibits A through F. With respect to claim 35, the appellants
contend that they explain “the limitation of promoter induction to the recited degree via
altered affinity for an activator protein,” in detail on p. 6 of their brief. Brief, p. 13.
We acknowledge that in unpredictable art areas, our appellate reviewing court has
“refused to find broad generic claims enabled by specifications that demonstrate the
enablement of only one or a few embodiments and do not demonstrate with reasonable
specificity how to make and use other potential embodiments across the full scope of the
claim.” PPG Indus., Inc. v. Guardian Indus. Corp., 75 F.3d 1558, 1564, 37 USPQ2d
1618, 1623 (Fed. Cir. 1996). The court explained that enablement is lacking in those
cases, “because the undescribed embodiments cannot be made, based on the disclosure
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