Appeal No. 1997-4381
Application 08/440,734
In the present case, even if a considerable amount of experimentation is required to
determine blocker peptides within the scope of the invention by their ability to bind and
block binding sites/determinates on the bacteria and their ability to competitively inhibit
subsequent phage attack, such experimentation would appear to be routine to those of
ordinary skill in the relevant art.
Nor are we concerned that the claims may include inoperable embodiments, as is it
not a function of the claims to specifically exclude possible inoperative embodiments.
Atlas Powder Co. v. E.I. DuPont de Nemours & Co., 750 F.2d 1569, 1576-77, 224 USPQ
409, 414 (Fed. Cir. 1984); In re Geerdes, 491 F.2d 1260, 1265, 180 USPQ 789, 793
(CCPA 1974). The Federal Circuit has cautioned against limiting a claimed invention to
preferred embodiments or specific examples set forth in the specification. Texas
Instruments v. U.S. Int'l Trade Comm., 805 F.2d 1558, 1562,
231 USPQ 833, 835 (Fed. Cir 1986). Thus, we find with respect to the pending claims,
the examiner has not met the burden of proof by advancing acceptable reasoning
inconsistent with enablement. In view of the above, the rejection of the claims under 35
U.S.C. § 112, first paragraph is reversed.
35 U.S.C. § 103
Claims 9-12 and 15-16 stand rejected under 35 U.S.C. § 103 as unpatentable for
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