Appeal No. 1999-0197
Application 08/054,970
contain the specified molecules which bind to the target peptide. If so, then step c) would
not be performed. That situation does not mean that claim 37 as whole is non-enabled.
The examiner has not explained why the claimed screening methods would not identify the
defined molecules if they are present in the material being screened.
By way of analogy, let us consider a claim directed to separating iron scrap from a
waste stream by use of magnets. The fact that the waste streams processed according to
that method may never contain iron scrap does not mean that the method is non-enabled.
The use claims stand on another foot in that they presuppose the screening
procedure has successfully identified molecules which bind according to the claims on
appeal. As we understand the examiner’s position it is premised in large part upon the
fact that the specification of this application does not describe a specific molecule which
possesses the binding requirements of the claims on appeal. However, the lack of
description of a single specific molecule does not in and of itself mean that the claims are
non-enabled. Rather, the specification need only teach one skilled in the art how to
practice the claimed invention without undue experimentation. In re Wright, 999 F.2d
1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993). In considering the issue of
undue experimentation in PPG Indus., Inc. v. Guardian Indus. Corp., 75 F.3d 1558, 1564,
37 USPQ2d 1618, 1623 (Fed. Cir. 1996), the court stated:
In unpredictable art areas, this court has refused to find broad generic claims
enabled by specifications that demonstrate the enablement of only one or a
few embodiments and do not demonstrate with reasonable specificity how to
make and use other potential embodiments across the full scope of the
claim. See, e.g., In re Goodman, 11 F.3d 1046, 1050-52, 29 USPQ2d
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