Appeal No. 2001-2584 Page 6
Application No. 08/462,817
state of the prior art, the relative skill of those in the art, the predictability or
unpredictability of the art, and the breadth of the claims.
On this record, the examiner provides no analysis of the Wands factors.
In addition, we find that the examiner did not rely on any factual evidence to
support his position. Instead, we find only the examiner’s unsupported
conclusions, tied together with the issue of written description, as to why the
specification does not enable the claimed invention. In the absence of a fact-
based statement of a rejection based upon the relevant legal standards, the
examiner has not sustained his initial burden of establishing a prima facie case
of non-enablement.
As the examiner recognizes (Answer, page 4), the specification describes
seven proteins identified as members of the steroid/thyroid hormone receptor
superfamily. In addition, as appellants argue (Brief, page 6):
Figure III-6 [of the specification] … provides a schematic
comparison of steroid and thyroid hormone receptors, and shows
areas of homology that define members of the superfamily….
Indeed, it is the presence of such structural domains, which
[a]ppellants have identified as existing in all members of the
steroid/thyroid hormone superfamily of receptor proteins, and
associated functional properties, that defines this family.
According to appellants (Brief, page 7), not only does their specification provide
sequence information for several members of the steroid/thyroid receptor
superfamily, it also provides a description of the characterizing structural
features.
As recognized by the court in Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406:
A description of a genus of cDNAs may be achieved by
means of a recitation of a representative number of cDNAs
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