Appeal No. 1997-3242
Application 07/929,834
scope to those used in describing and defining the subject matter sought to
be patented must be taken as in compliance with the enabling requirement
of the first paragraph of § 112 unless there is reason to doubt the objective
truth of the statements contained therein which must be relied on for enabling
support.
While the factors relied on by the examiner are relevant in determining whether the
claimed invention is enabled by the specification, we hold that, on balance, they are
insufficient to establish a reasonable basis to doubt the objective truth of statements
regarding design of compounds to bind and inhibit the function of RNA molecules.
Accordingly, we hold that the examiner has not established that the experimentation
required to practice the claimed invention would be undue. The examiner’s rejection of
claims 1 through 14 for lack of enablement under 35 U.S.C. § 112, first paragraph, is
reversed.
Rejections II-IV: Double Patenting
Claims 1 through 5, 8 through 10 and 12 through 14 stand provisionally rejected
under 35 U.S.C. § 101 as claiming the same invention as that of claims 1, 3, 14 through
16, 4 through 6 and 8 through 10 of copending application 08/249,689. Claims 1, 2, 8
through 11, 13 and 14 stand provisionally rejected under the judicially-created doctrine of
obviousness-type double patenting as unpatentable over claims 1, 3 through 6, 9 and 10 of
copending application 08/249,689. Finally, claims 1 through 5, 7 through 10 and 12
through 14 stand provisionally rejected under the judicially-created doctrine of
obviousness-type double patenting as unpatentable over claims 1, 3, 14 through 16, 4
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