Appeal No. 1997-4380
Application No. 08/147,878
further reference appellants’ Brief3, and appellants’ Reply Brief4 for the appellants’
arguments in favor of patentability.
THE REJECTION UNDER 35 U.S.C. § 112, FIRST PARAGRAPH:
It is well settled that the examiner bears the initial burden of providing
reasons why a supporting disclosure does not enable a claim. In re Marzocchi, 439
F.2d 220, 223, 169 USPQ 367, 370 (CCPA 1971). See also, In re Wands, 858
F.2d 731, 737, 8 USPQ2d 1400, 1404, (Fed. Cir. 1988):
Factors to be considered in determining whether a
disclosure would require undue experimentation have
been summarized by the board in In re Forman, [230
USPQ 546, 547 (BdPatAppInt 1986)]. They include (1)
the quantity of experimentation necessary, (2) the
amount of direction or guidance presented, (3) the
presence or absence of working examples, (4) the
nature of the invention, (5) the state of the prior art, (6)
the relative skill of those in the art, (7) the predictability
or unpredictability of the art, and (8) the breadth of the
claims. (footnote omitted).
In this case the examiner failed to analyze the claimed invention with
reference to the factors set forth in Wands. Instead the examiner merely makes a
series of conclusions:
The specification does not adequately teach how to deliver the
claimed oligonucleotides (oligos) in vivo. [Answer, page 5]…. The
specification does not adequately teach how to use the claimed
methods in vivo because it does not disclose what happens when the
oligos are administered. [Answer, page 6]…. The specification does
not explain how to use the claimed methods for diagnosis. [Answer,
page 7].
3 Paper No. 22, received March 31, 1997.
4 Paper No. 25, received August 28, 1997.
4
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