Appeal No. 1999-1355 Page 6
Application No. 08/469,786
We accept, for the sake of argument, that many chimeric proteins will not fold
properly, will not function properly, and may not be secreted properly, and that a certain
amount of experimentation would be required to identify those that will. But quantity of
experimentation is only one factor in determining whether the experimentation is undue.
Others factors are the amount of direction or guidance presented, and the presence or
absence of working examples. Here, the fact that the specification demonstrates the
successful production of several different hybrid proteins comprising antibodies joined
to members of several different protein classes (Specification, Examples 1-5, pages 12-
28) weighs heavily in favor of a finding of enablement for claims broader than the
working examples. The examiner’s summary dismissal of the examples as “not
representative of all classes of non-Ig protein moieties” is not evidence, and does not
provide a reasonable basis to question the adequacy of the disclosure provided for the
claimed invention.
In our judgment, the reasons cited in support of the examiner’s rejection are
insufficient to support the examiner’s conclusion that “the present specification does not
enable the scope of the claims” (Answer, page 10).
Accordingly, the rejection of claims 35-47 under the first paragraph of 35 U.S.C.
§ 112 is reversed.
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