Appeal No. 1999-1155
Application No. 08/241,253
Enablement
In view of its brevity, we reproduce the examiner’s rejection in its entirety:
The terms ‘optionally substituted’, functional groups capable of forming a
conjugate with a biomolecule are of such staggering breadth, the
specification fails in meeting with the enablement (how to make)
requirement i.e. how these plethora of diverse molecules are conjugated
with the instant macromolecules. The long list of biomolecules on page
18, peptides, polypeptides, oligosaccharides . . . fragments of RNA, DNA
are too diverse chemically and too functional legally.
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, 369 (CCPA 1971). While the claims are indeed broad, we agree
with appellants that the examiner has not provided a reasonable basis to question
whether the specification would enable one skilled in the art to make the claimed
compounds, particularly in light of Dr. Ranganathan’s assertion that “[t]he conjugation of
the groups . . . in [the] claims . . . with a biomolecule of the claims is a process well
known in the art” and “a matter of routine.”5 Accordingly, the rejection is reversed.
Indefiniteness
Again, in view of its brevity, we reproduce the examiner’s rejection:
4(...continued)
obviousness, we find it unnecessary to comment on the declaration submitted April 21,
1997 under 37 CFR § 1.132 as it pertains to unexpected properties of the claimed
compounds. In re Geiger, 815 F.2d 686, 688, 2 USPQ2d 1276, 1278 (Fed. Cir. 1987).
5 See paragraph 13 of the declaration submitted under the provisions of 37 CFR
§ 1.132 (paper no. 17, April 21, 1997).
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