Ex Parte ZHANG et al - Page 4



            Appeal No. 2001-0693                                                          Page 4              
            Application No. 08/898,300                                                                        
                   court has explained, because the undescribed embodiments cannot be                         
                   made, based on the disclosure in the specification, without undue                          
                   experimentation.  But the 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 “must 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).                                                
            The only specific finding made by the examiner which is relevant in considering this              
            legal standard is found at page 8 of the Examiner's Answer where the examiner states              
            "without specific guidance on which 9, 10 and 11 amino acid sequences to use for the              
            peptide membrane forming experiments, a very large amount of peptide sequences                    
            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 may be concerned that the claims may embrace                    
            possibly inoperative embodiments, we point to Atlas Powder Co. v. E.I. du Pont de                 







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