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 dePage: Previous 1 2 3 4 5 6 NextLast modified: November 3, 2007