Appeal No. 1997-2372
Application 08/083,945
experimentation necessary, (2) the amount of direction or guidance presented, (3) the
presence or absence of working examples, (4) the nature of the invention, (5) the state of
the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability
of the art, and (8) the breadth of the claims. In re Wands, 858 F.2d 731, 737, 8 USPQ2d
1400, 1404 (Fed. Cir. 1988). We note that all of the factors need not be reviewed when
determining whether a disclosure is enabling. Amgen, Inc. v. Chugai Pharm. Co., 927
F.2d 1200, 1213, 18 USPQ2d 1016, 1027 (Fed. Cir.), cert. denied, 112 S. Ct. 1696
(1991)(noting that the Wands factors "are illustrative, not mandatory. What is relevant
depends on the facts.").
The examiner has determined that based on the specification and state of the art it
would require undue experimentation to practice the claimed invention within the scope of
the pending claims. Considering the Forman factors set forth above individually, it would
appear that the nature of the invention described in claim 6, is directed to “A substantially
pure polypeptide comprising an amino acid sequence showing at least 90% sequence
identity to SEQ. ID. NO. 7, or a fragment thereof,” broadly encompassing both peptides
which bind to heparin, and peptides which do not bind to heparin.
With regard to the amount of direction or guidance presented in the specification
and the presence or absence of working examples, we find the specification describes a
heparin binding site at amino acids 7-12 in P189 (a peptide derived from the amino
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007