Appeal No. 1999-0197
Application 08/054,970
the examiner should pay special attention to that aspect of the claimed subject matter
directed to p75-TNF-R in terms of claim definiteness and enablement. It may not be clear
from claims, such as claim 34, which amino acids of the p75-TNF-R correspond to the
p55-TNF-R amino acids recited in that claim in that it is not clear what appellants mean by
use of the word “correspond.” Correspond in identity? Location in the protein? Assuming
one skilled in the art would understand which amino acids “correspond” between the two
receptors, the question becomes would one be able to practice the claimed invention in
regard to the p75-TNF-R embodiment without undue experimentation? In considering this
issue, the examiner should take into account the legal standards set forth above. If the
examiner decides an enablement question does arise in regard to this aspect to the
claimed invention or any other aspect of the claims on appeal, we urge the examiner to
review the court’s opinion in Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 52
USPQ2d 1129 (Fed. Cir. 1999) since the court provided a model of a fact-based analysis
of an enablement issue using the so-called Wands factors. See In re Wands, 858 F.2d
731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). In the future, it would be helpful to the
record in patent applications if the examiner would consider enablement issues in the
context of the Wands factors and make of record a fact-based analysis of the relevant
factors.
The decision of the examiner is reversed.
REVERSED
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