Appeal No. 1996-0160
Application 07/898,691
sequence is as follows: ala-ser-thr-thr-thr-asn-tyr-thr. Id.
Rejection I
The examiner provides numerous reasons in the Answer and the supplemental
Answers as to why the specification would not have enabled one skilled in the art to make
and use the claimed method. As we understand it, the only remaining issue, in that regard,
is whether the specification would have enabled such person to make and use the “broad
range of tertrapeptides [sic, tetrapeptides] and pentapeptides” encompassed by the
claims. Supplemental Answer (Paper No. 34), sentence bridging pp. 1-2. In brief, the
examiner argues that
the appellant should note that amino acid residues can be considered
as members of different classes, that it is doubtful that the claimed
pentapeptides and tertrapeptides [sic, tetrapeptides] with different
lengths from peptide T would have similar activity, and that no data at
all has been presented to show that such pentapeptides and
tetrapeptides would have similar activity as the tested octapeptide. In
view of the working examples, the nature of the invention, the state of
the art, the unpredictability of the changes to amino acid sequences
and the breadth of the claims, it would take undue experimentation to
practice the invention as
broadly claimed [emphasis added] [Id., p. 2].
It is well established that the examiner may reject the claims as being based on a
non-enabling disclosure when s/he has reason to conclude that one skilled in the art would
be unable to carry out the claimed invention. In re Buchner, 929 F.2d 660, 661,
18 USPQ2d 1331, 1332 (Fed. Cir. 1991); In re Marzocchi, 439 F.2d 220, 223, 169
USPQ 367, 369 (CCPA 1971) (“a specification disclosure which contains a teaching of
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