Appeal No. 2001-1705 Page 3
Application No. 08/616,141
Yu et al. (Yu) “A Hairpin Ribozyme Inhibits Expression of Diverse Strains of
Human Immunodeficiency Virus Type 1,” Proc. Natl. Acad. Sci, Vol. 90
pp. 6340-6344 (1993)
GROUNDS OF REJECTION
Claim 31 stands rejected under 35 U.S.C. § 112, first paragraph, as being
based on an insufficient disclosure to support or enable the claimed invention.
Claims 1, 2, 5, 6, 19, 20, 23 and 30 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Cannon
Claims 1-8, 11, 12, 19-25 and 31 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Dixon in view of any one of Yu, Leonetti or Lisziewicz.
Claims 1-8, 11-13, 19-24 and 31 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Doan and Offensperger.
Claims 26-29 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Dixon, Yuan, Offensperger and Korba.
We reverse.
DISCUSSION
THE REJECTION UNDER 35 U.S.C. § 112, FIRST PARAGRAPH:
To satisfy the enablement requirement of 35 U.S.C. § 112, first
paragraph, a patent application must adequately disclose the claimed invention
so as to enable a person skilled in the art to practice the invention at the time the
application was filed without undue experimentation. Enzo Biochem, Inc. v.
Calgene, Inc., 188 F.3d 1362, 1371-72, 52 USPQ2d 1129, 1136
(Fed. Cir. 1999). We note, however, that “nothing more than objective
enablement is required, and therefore it is irrelevant whether this teaching is
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