Appeal No. 95-5069
Application No. 08/202,055
Du Pont DeNemours & Co., 750 F.2d 1569, 1576-77, 224 USPQ 409,
414 (Fed. Cir. 1984):
Even if some of the claimed combinations were
inoperative, the claims are not necessarily invalid.
"It is not a function of the claims to specifically
exclude . . . possible inoperative substances . . .
." Of course, if the number of inoperative
combinations becomes significant, and in effect
forces one of ordinary skill in the art to
experiment unduly in order to practice the claimed
invention, the claims might indeed be invalid.
That, however, has not been shown to be the case
here. [Citations omitted].
On this record, the examiner has not established that the
number of inoperative glycoproteins encompassed by claims 1,
4, and 5 is significant or "in effect forces one of ordinary
skill in the art to experiment unduly in order to practice the
claimed invention." The examiner sets forth a conclusory
statement that "the specification fails to provide guidance as
to the appropriate glycoprotein features required for the
operation of the system." See the Examiner's Answer, page 4,
first full paragraph. That, however, is a bald conclusion not
adequately supported by facts. The examiner has not provided,
for the record, a fact-based analysis of the specification
teachings. We therefore reverse the rejection of claims 1, 4,
-7-
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