Appeal No. 1997-2741
Application 08/213,873
is “relatively modest.” Based on these factors, Appellants argue that the claims
are enabled by the specification.
It is well-settled that enablement under 35 U.S.C. § 112, first paragraph,
requires that a person of skill in the art be able to practice the full scope of the
claimed invention without undue experimentation. Before considering the
enablement issue, however, the claims must be construed to determine their
proper scope. See, e.g., In re Cortright, 165 F.3d 1353, 1357, 49 USPQ2d 1464,
1466-67 (Fed. Cir. 1999). “[A]s an initial matter, the PTO applies to the verbiage
of the proposed claims the broadest reasonable meaning of the words in their
ordinary usage as they would be understood by one of ordinary skill in the art,
taking into account whatever enlightenment by way of definitions or otherwise
that may be afforded by the written description contained in the applicant’s
specification.” In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1027 (Fed.
Cir. 1997).
Here, the claims are drawn to a method of treating “a condition associated
with ß-amyloid peptide.” As the examiner notes, the specification contains no
discussion of conditions associated with ß-amyloid peptide in organ systems
other than the brain. Notably, the title of the application at issue is “Treatment of
Alzheimer’s Disease Employing Inhibitors of Cathepsin D.” In fact, the
specification’s discussion of ß-amyloid-associated disorders is almost entirely
limited to Alzheimer’s disease. See, e.g., page 1, lines 13-15 (“it was proposed
early on that ß-amyloid peptide is invo lved in . . . Alzheimer’s disease”); page 3,
4
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