Appeal No. 1999-1330
Application No. 08/527,373
patent applicants are not required to disclose every species encompassed by their
claims, even in an unpredictable art. In re Angstadt, 537 F.2d 498, 502-03, 190 USPQ
214, 218 (CCPA 1976).
The examiner has premised this rejection on two propositions. The first is that
the nude mouse is not a predictable model for the treatment of tumors in humans. Yet,
as pointed out by the appellants, both Wills and Liu make use of this same model in
their studies. To the extent that it can be urged that these publications are
representative of those studying this type of treatment, they provide a strong indication
that the nude mouse is the accepted model in studies of this type of cancer or tumor
treatment and are considered reasonably predictive of future use in other animals such
as humans by those skilled in this art. The second proposition appears to be that the
specification lacks sufficient guidance as to the mode of administration, appropriate
viral vector to use and the unpredictability of the vector targeting the appropriate tumor
cells in vivo in a human patient. (Answer, pages 11-12). The examiner does not explain
why the disclosure provided by the specification relating to the administration of vectors
and cells, noted by appellants supra, does not provide sufficient guidance for practicing
the invention without undue experimentation. In addition, we note the discussion in
Wills at page 1086, column 2, starting with the first full paragraph which explicitly
addresses the use of gene therapy in humans. This discussion reasonably suggests
that:
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