Appeal No. 2001-0636 Page 5
Application No. 08/824,513
would have to be screened." As seen, the examiner focuses on the amount
of experimentation which may be required instead of explaining why that
experimentation would be undue and not routine. Absent a fact-based explanation from
the examiner as to why the experimentation needed to make and use the claim
embodiments where amphiphilic peptides are needed having the “alternating,
complementary and structural” properties but contain fewer than 12 amino acids, we
hold that the examiner has failed to establish a prima facie case of lack of enablement.
To the extent the examiner is concerned that the claims may embrace possibly
inoperative embodiments, we point to Atlas Powder Co. v. E.I. du Pont de Nemours &
Co., 750 F.2d 1569, 1576-77, 224 USPQ 409, 414 (Fed. Cir. 1984), where the court
stated:
Even if some of the claimed combinations were inoperative, the claims are
not necessarily invalid. "It is not a function of the claims to specifically
exclude . . . possible inoperative substances . . . .” In re Dinh-Nguyen,
492 F.2d 856, 858-59, 181 USPQ 46, 48 (CCPA 1974) (emphasis
omitted). Accord, In re Geerdes, 491 F.2d 1260, 1265, 180 USPQ 789,
793 (CCPA 1974); In re Anderson, 471 F.2d 1237, 1242, 176 USPQ 331,
334-35 (CCPA 1973). Of course, if the number of inoperative
combinations becomes significant, and in effect forces one of ordinary
skill in the art to experiment unduly in order to practice the claimed
invention, the claims might indeed be invalid. See, e.g., In re Cook, 439
F.2d 730, 735, 169 USPQ 298, 302 (CCPA 1971).
Again, absent a fact-based explanation from the examiner why the number of
possible inoperative embodiments is significant, we do not find that the examiner has
established a prima facie case of lack of enablement.
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