Appeal No. 2000-1919
Application No. 08/831,993
Marzocchi, 439 F.2d at 223, 169 USPQ at 369, emphasis in original. The
examiner’s complaints about the data in this case do not provide a sufficient
basis “to doubt the objective truth of the statements” in the specification.
Appellant’s position is also supported by the Ludtke declaration. Dr.
Ludtke declares that “the application teaches in detail everything one of ordinary
skill in the art needs to practice the invention (i.e. inhibit the development of
intracellular parasites in erythrocytes) without the need for any experimentation
beyond routine screening.” Ludtke declaration, paragraph 2. The examiner has
cited no evidence that contradicts the Ludtke declaration. Rather, he dismissed it
as “not provid[ing] any further factual evidence and merely cit[ing] the
specification.” Examiner’s Answer, page 8. Therefore, as Appellant notes, the
Ludtke declaration remains uncontroverted as evidence that the claims are fully
enabled by the specification. Reply Brief, page 1.
With respect to the PGLa and XPF peptides encompassed by claims 1
and 11, Appellant argues that “[t]he use of PGLa and XPF peptides is the same
as the structurally analogous magainin peptides. . . . Substituting one taught
peptide for another taught peptide does not require undue experimentation.”
Revised Appeal Brief, page 4. The examiner provided no substantive response
(see the Examiner’s Answer, page 8) and no evidence or reasoning on which to
base a conclusion that using PGLa or XPF peptides in the claimed method would
require undue experimentation. We therefore conclude that the examiner has
not met his burden of showing nonenablement with respect to this limitation.
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