Appeal No. 2001-0889 Page 5
Application No. 08/459,086
Appeal Brief, page 8. Appellant notes that the specification provides guidance
regarding how to make the recited peptides and how to raise antibodies.
According to Appellant, the specification “provides the information necessary to
enable the skilled worker to routinely and without undue experimentation make
and screen antibodies for the detection of IFN-β.” Appeal Brief, page 9.
“When rejecting a claim under the enablement requirement of section 112,
the PTO bears an initial burden of setting forth a reasonable explanation as to
why it believes that the scope of protection provided by that claim is not
adequately enabled by the description of the invention provided in the
specification of the application; this includes, of course, providing sufficient
reasons for doubting any assertions in the specification as to the scope of
enablement.” In re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513
(Fed. Cir. 1993).
As we understand it, the examiner’s position is that the claims encompass
antibodies to peptides having non-conservative substitutions with respect to the
naturally occurring β-interferon sequence, and such substitutions “would very
likely abolish activity of the peptide to generate antibodies.” Therefore, she
concluded that the claims encompass inoperative embodiments and undue
experimentation would be required to practice their full scope.
The examiner has not met the initial burden of showing nonenablement.
First, the examiner has provided no evidence or scientific reasoning to support
her position that certain peptides recited by the claims would be “very likely” to be
ineffective in raising antibodies. The specification states that the peptides recited
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