Appeal 110.1998-0667 Page 6
Application 110. 081280,306
947 F.2d 488,495, 20 USPQ2d 1438, 1444 (Fed. Cir. 1991); In re Wands, 858 F.2d
731, 736-37, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). As a matter of logic, assuming
claims 2-5 are proper dependent claims and we see no reason why they are not, the
examiner's decision that claims 2-5 are non-enabled necessarilv means that claim 1 is
non-enabled. We find no explanation on the record as to the examiner's reasoning
behind the decision not to reject claim 1 as being non-enabled. In view of our
disposition of the rejection of claims 2-5 under this section of the statute, we view this
as harmless error on the examiner's part.
In reviewing the facts and reasoning relied upon by the examiner in stating the
rejection on pages 5-8 of the Examiner's Answer and amplified in the examiner's
response to the appellants' arguments on appeal appearing at pages 12-1 5 of the
Answer, it appears that the examiner's concern is directed more to his belief that the
field of gene therapy itself is non-enabled as opposed to the use of the present
pseudocaps1id technology in the field of gene therapy being non-enabled. We reach
this conclusion on the basis that the references relied upon by the examiner in support
of the enablement rejection are directed to gene therapy in general or gene therapy as
implemented by other therapeutics besides pseudocapsids. Our review of the
examiner's evidence in light of the correct legal standards leads us to conclude that the
evidence does not support the broad proposition that gene therapy is nonenabled.
Since we have no separate stated position specific to the present pseudocapsid
technology, the examiner's rejection cannot be sustained.
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