Appeal No. 2001-1263 Page 10
Application No. 08/475,955
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 examiner has not performed sufficient fact-finding under the appropriate legal
standard in order to properly arrive at the conclusion that practicing the claimed
invention would require undue experimentation. It may be that determining which of the
myriad peptides encompassed by claim 1 on appeal possess the requisite binding
property will involve further experimentation. But that does not mean that the claim is
non-enabled. Absent further fact-finding and analysis by the examiner as to why the
amount of experimentation needed in order to make the determination would be
considered undue rather than routine, we do not find the examiner has established a
prima facie case of non-enablement.
Rejection III
We reverse the examiner’s rejection of claims 7-11 under 35 U.S.C. § 112,
second paragraph. As stated at Page 7 of the Examiner’s Answer, “[c]laim 1 is a
product claim, limited to a peptide of upto [sic] 39 amino acids. Claims 7-11 have an
additional pharmaceutical carrier, labels or are immobilized onto substrate, thereby
broadening the claim to be a composition claim.” To the extent that we understand the
examiner’s position, we do not find that these claims are in violation of the definiteness
requirement of § 112, second paragraph.
If the examiner believes that dependent claims 7 through 11 are improper
dependent claims, the rejection would be based upon paragraph 4 of § 112, not
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