Appeal No. 1995-2374
Application 07/673,158
clear that claim 5 refers to the amino acid sequence of Figure 1 while claim 6 refers to the
nucleotide sequence of Figure 1.
Both rejections under 35 U.S.C. § 112, second paragraph, are reversed.
2. Enablement
As explained on pages 3-4 of the Examiner's Answer, the examiner believes that
the claims on appeal must be limited to the “nucleic acid sequence of Figure 1.” We
disagree.
Again, in making this rejection, the examiner has not used the correct legal
standard. The issue raised by the examiner is whether one skilled in the art could make
and use the claimed invention throughout its scope without undue experimentation. As set
forth in the sentence bridging pages 3-4 of the Examiner's Answer:
“It would require undue experimentation for one of skill in the art to have to
make every protein which has 'at least 80% homology' with the protein
whose sequence is given in Figure 1 and then to test every single one of
these homologues to determine whether it will function to 'fold [newly
synthesized proteins] into their biologically active conformation.”
As explained in PPG Indus., Inc. v. Guardian Indus. Corp., 75 F.3d 1558, 1564,
37 USPQ2d 1618, 1623 (Fed. Cir. 1996):
In unpredictable art areas, this 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. See, e.g., In re Goodman, 11 F.3d 1046, 1050-52, 29 USPQ2d
2010, 2013-15 (Fed. Cir. 1993); Amgen, Inc. v. Chugai Pharmaceutical Co.,
927 F.2d 1200, 1212-14, 18 USPQ2d 1016, 1026-28 (Fed. Cir.), cert.
denied, 502 U.S. 856 (1991); In re Vaeck, 947 F.2d at 496, 20 USPQ2d at
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