Appeal No. 2001-0693 Page 3
Application No. 08/898,300
describes the present invention in terms of the amphiphilic peptides being of 12 or more
amino acids in length. However, that is not to say that the original disclosure of this
application fails to describes amphiphilic peptides which have the alternating,
complementary and structurally compatible requirements but are fewer than 12 amino
acids in length. For example, original claim 1 of this application was directed to a
method for in vitro cell culture as is present claim 37 to place no length restriction on
the amphiphilic peptides which form the macroscopic membranes.
In this regard, we note that the examiner has not rejected the claims on appeal
under the written description requirement of 35 U.S.C. § 112, first paragraph. Given
that appellants have described an invention broader than claim 1 of the '483 patent, the
issue becomes whether one skilled in the art would be able to make and use the
claimed invention to the extent it reads upon amphiphilic peptides having the
alternating, complementary, structurally compatible properties but contain fewer than 12
amino acids.
Viewed in this light, the issue raised by the examiner is one of undue
experimentation. In considering the examiner's concern in this regard, we find the
following passage from PPG Indus., Inc. v. Guardian Indus. Corp., 75 F.3d 1558, 1564,
37 USPQ2d 1618, 1623 (Fed. Cir. 1996), instructive:
In unpredictable art areas, this court has refused to find broad generic
claims enabled by specifications that demonstrate the enablement of only
one or a few embodiments and do not demonstrate with reasonable
specificity how to make and use other potential embodiments across the
full scope of the claim. See, e.g., In re Goodman, 11 F.3d 1046, 1050-52,
29 USPQ2d 2010, 2013-15 (Fed. Cir. 1993); Amgen, Inc. v. Chugai
Pharmaceutical Co., 927 F.2d. 1200, 1212-14, 18 USPQ2d 1016, 1026-
28 (Fed. Cir.), cert. denied, 502 U.S. 856 (1991); In re Vaeck, 947 F.2d at
496, 20 USPQ2d at 1445. Enablement is lacking in those cases, the
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