Appeal No. 1997-2372
Application 08/083,945
polypeptides of claim 6 which are capable of binding to heparin. We interpret claim 36 as
directed to a specific polypeptide which has a specific sequence as set forth in SEQ ID
NO: 7, which is also capable of binding to heparin according to the specification pages 25
and 26, and prosecution history, Paper No. 24, page 23.
DECISION ON APPEAL
Rejection 35 U.S.C. § 112, first paragraph
After having properly determined the scope of the claim at issue, we proceed with
deliberations addressing the rejection for lack of enablement under 35 U.S.C.
§ 112, first paragraph. The specification is objected to, and claims 6, 10, 35, 36, 37 are
rejected under 35 U.S.C. § 112, first paragraph.
"To be enabling, the specification of a patent must teach those skilled in the art how
to make and use the full scope of the claimed invention without 'undue experimentation.'"
[Emphasis added.] Genentech, Inc. v. Novo Nordisk, A/S, 108 F.3d 1361, 1365, 42
USPQ2d 1001, 1004 (Fed. Cir.1997) (quoting In re Wright, 999 F.2d 1557, 1561, 27
USPQ2d 1510, 1513 (Fed. Cir. 1993)). Conversely, the first paragraph of Section 112
requires that the scope of protection sought in a claim bear a reasonable correlation to the
scope of enablement provided by the specification. An analysis of whether the claims
under appeal are supported by an enabling disclosure requires a determination of whether
that disclosure contained sufficient information regarding the subject matter of the
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