Appeal No. 1999-1223 Page 6
Application No. 08/446,021
definition of “altered phenotype,” i.e., "a sustained alteration in the cellular biochemistry
. . . by the expression of a foreign DNA molecule within the tissues of the bird."
If that is in fact the examiner’s concern, the examiner has not set forth a rejection
based upon the relevant legal principles and performed the fact-finding needed to
support such a conclusion. As set forth in PPG Indus., Inc. v. Guardian Indus. Corp.,
75 F.3d 1558, 1564, 37 USPQ2d 1618, 1623 (Fed. Cir. 1996)
In unpredictable art areas, this court has refused to find broad generic
claims enabled by specifications that demonstrate the enablement of only
one or a few embodiments and do not demonstrate with reasonable
specificity how to make and use other potential embodiments across the
full scope of the claim. See, e.g., In re Goodman, 11 F.3d 1046, 1050-52,
29 USPQ2d 2010, 2013-15 (Fed. Cir. 1993); Amgen, Inc. v. Chugai
Pharmaceutical Co., 927 F.2d. 1200, 1212-14, 18 USPQ2d 1016, 1026-
28 (Fed. Cir.), cert. denied, 502 U.S. 856 (1991); In re Vaeck, 947 F.2d at
496, 20 USPQ2d at 1445. Enablement is lacking in those cases, the
court has explained, because the undescribed embodiments cannot be
made, based on the disclosure in the specification, without undue
experimentation. But the question of undue experimentation is a matter of
degree. The fact that some experimentation is necessary does not
preclude enablement; what is required is that the amount of
experimentation “must not be unduly extensive.” Atlas Powder Co., v. E.I.
DuPont De Nemours & Co., 750 F.2d 1569, 1576, 224 USPQ 409, 413
(Fed. Cir. 1984). The Patent and Trademark Office Board of Appeals
summarized the point well when it stated:
The test is not merely quantitative, since a considerable
amount of experimentation is permissible, if it is merely
routine, or if the specification in question provides a
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).
Clearly, to make a case of undue experimentation, the examiner needs to make a more
detailed analysis taking into account the scope of the claims, the state of the prior art,
and relevant evidence which is properly applied in support of the conclusions reached.
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