Appeal No. 2002-1251 Page 7
Application No. 08/459,340
Appellants argue that the examiner
fails to provide any evidence whatsoever that the instant invention
would not work for its intended purpose, other tha[n] alleging the
unpredictability of in vivo efficacy based on the Antisense ’97
article, or that ribozyme delivery is an unpredictable art based on
the Branch article. Appellants, however, have provided ample data
and guidance in the specification and indicated teachings in the art
that demonstrate the efficacy of modified enzymatic nucleic acid
molecules both in vitro and in vivo. . . . In the absence of any
technical reasons and/or references to support its reasoning, the
Office has failed to establish a prima facie case of lack of
enablement.
Reply Brief, pages 12-13.
“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. If the PTO meets this burden, the burden then shifts to the
applicant to provide suitable proofs indicating that the specification is indeed
enabling.” In re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed.
Cir. 1993).
We agree with Appellants that the examiner has not met the burden of
providing evidence to support a prima facie case of nonenablement. The
examiner provides no Wands-based analysis, based on the particular facts of the
application and claims under consideration, supporting a conclusion that undue
experimentation would have been required to use the claimed compositions
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007