Appeal No. 1999-0326
Application No. 07/997,715
no. 28); and the above-cited reference. We note that claims 28 through 31, the only claims
under appeal, were newly presented in the Second Supplemental Amendment.
On consideration of the record, including the materials listed above, we reverse the
examiner’s rejection under the first paragraph of 35 U.S.C. § 112.
Discussion
According to the examiner, “[t]he sole remaining issue of non-patentability . . . is the
scope of enablement,” inasmuch as “the only means of inhibiting expression of IGF-I . . .
taught in the specification is . . . a single gene construct,” i.e., the anti-sense nucleic acid
construct pANTI-IGF-I, and it would have required undue experimentation to inhibit IGF-I
expression by any other means. Second Supplemental Examiner’s Answer, pages 1 and
2.
“When rejecting a claim under the enablement requirement of section 112, the PTO
bears the burden of setting forth a reasonable explanation as to why it believes that the
scope of protection provided by that claim is not adequately enabled by the description of
the invention provided in the specification . . . ; this includes, of course, providing sufficient
reasons for doubting any assertions in the specification as to the scope of enablement.” In
re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993).
The examiner offers two reasons in support of his conclusion that the specification
is not broadly enabling for inhibiting IGF-I expression, neither of which is consistent with the
evidence of record.
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