Appeal No. 2000-1783 Page 6
Application No. 08/817,719
endothelial cells.@ Moreover, on page 9, the specification indicates that ACD23 binds to
SCRs [(short consensus repeats)] 5-8 and 1-2 on CD21@ and A[t]he binding of CD23 to
SCRs 5-8 is a lectin-like interaction,@ while ACD23 binding to SCRs1-2 is a protein-
protein interaction.@
We accept, for the sake of argument, that it would be time consuming to
determine whether an agent that binds CD23 also blocks interaction between CD23 and
one of its ligands. Nevertheless, the examiner does not question the ability of one
skilled in the art to follow the disclosed processes. As explained in PPG Indus., Inc. v.
Guardian Indus. Corp., 75 F.3d 1558, 1564, 37 USPQ2d 1618, 1623 (Fed. Cir. 1996),
undue experimentation has little to do with the quantity of experimentation; it is much
more a function of the amount of guidance or direction provided:
[T]he question of undue experimentation is a matter of degree. The fact
that some experimentation is necessary does not preclude enablement;
what is required is that the amount of experimentation Amust not be
unduly extensive.@ Atlas Powder Co. v. E.I. DuPont de Nemours & Co.,
750 F.2d 1569, 1576, 224 USPQ 409, 413 (Fed. Cir. 1984). The Patent
and Trademark Office Board of Appeals summarized the point well when
it stated:
The test is not merely quantitative, since a considerable
amount of experimentation is permissible, if it is merely
routine, or if the specification in question provides a
reasonable amount of guidance with respect to the direction
in which the experimentation should proceed to enable the
determination of how to practice a desired embodiment of
the invention claimed.
Ex parte Jackson, 217 USPQ 804, 807 (1982).
Finally, the examiner relies on Bonnefoy to establish Athat some but not all anti-
CD23 antibodies inhibit IgE production,@ thus, Athe ability of a particular anti-CD23
agent to inhibit CD23 mediated function@ is unpredictable. Answer, page 5.
Nevertheless, as appellant points out, A[i]f the antibody did not block the CD23 ligand
interaction, as required by the present claims, then failure to inhibit the CD23 response
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