Appeal No. 1996-1916
Application 07/912,122
[I]t is incumbent upon the Patent Office, whenever a rejection on this basis is
made, to explain why it doubts the truth or accuracy of any statement in a
supporting disclosure and to back up assertions of its own with acceptable
evidence or reasoning which is inconsistent with the contested statement.
In our judgment, a mere assertion of unpredictability is insufficient ground for
questioning the truth or accuracy of appellant’s disclosure, or for shifting the burden to
appellant to provide rebuttal evidence substantiating statements made in the specification.
To the extent that the examiner argues that appellant’s disclosure does not enable
any person skilled in the art to make and use the claimed invention without undue
experimentation, we disagree. Given the straightforward, routine protocol outlined in the
specification, together with what is well known in the art, we are persuaded that any
experimentation necessary to practice the claimed invention would be routine, not undue.
We hold that the examiner has not set forth a reasonable basis for questioning the
enablement of the claims on appeal. Accordingly, the rejection of claims 1 through 4 and 7
is reversed.
Obviousness
Claim 1 is directed to cDNA of a particular sequence (SEQ ID NO:3) encoding
soluble Flk-2. Claim 2 is directed to an expression cassette comprising cDNA (SEQ ID
NO:3) encoding soluble Flk-2; claim 3 is directed to a vector containing the expression
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