Appeal No. 1997-3370
Application 08/472,599
undescribed embodiments cannot be made, based on the disclosure in the
specification, without undue experimentation. But the question of undue
experimentation is a matter of degree. The fact that some experimentation
is necessary does not preclude enablement; what is required is that the
amount of experimentation “must not be unduly extensive.” Atlas Powder
Co., v. E.I. DuPont De Nemours & Co., 750 F.2d 1569, 1576, 224 USPQ
409, 413 (Fed. Cir. 1984). The Patent and Trademark Office Board of
Appeals summarized the point well when it stated:
The test is not merely quantitative, since a considerable
amount of experimentation is permissible, if it is merely
routine, or if the specification in question provides a
reasonable amount of guidance with respect to the direction in
which the experimentation should proceed to enable the
determination of how to practice a desired embodiment of the
invention claimed.
Ex parte Jackson, 217 USPQ 804, 807 (1982).
Moreover, the examiner should have reconsidered the Ex parte Forman factors in
view of the rebuttal argument put forth by appellants. Appellants indicate that the
specification instructs one of ordinary skill in the art that the DADHs of the present
invention can be isolated from members of the genus Candida, for example Candida
tropicalis and Candida shehatae. Page 11, lines 13-14. The appellants also argue that
the monoclonal antibodies described in the specification reasonably enable the skilled
artisan to screen for and isolate a specific DADH from any source, and suggest that
DADH from other species can be identified and isolated by determining whether the
DADH enzyme can bind to at least one of the disclosed monoclonal antibodies. Thus, the
5
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007