Appeal No. 2001-0490 Page 6
Application No. 08/524,206
1237, 1242, 176 USPQ 331, 334-35 (CCPA 1971). Of course, if
the number of inoperative combinations becomes significant, and in
effect forces one of ordinary skill in the art to experiment unduly in
order to practice the claimed invention, the claims might indeed be
invalid. See e.g., In re Cook, 439 F.2d 730, 735, 169 USPQ 298,
302 (CCPA 1971).
Similarly we are not persuaded by the examiner’s arguments (Answer, pages 8-
9) with regard to restenosis, the scope of claim 1 is not limited to the treatment of
restenosis.
For the foregoing reasons, it is our opinion that the examiner failed to
provide the evidence necessary to establish a prima facie case of non-
enablement. Accordingly, we reverse the rejection of claim 1 under 35 U.S.C.
§ 112, first paragraph. As set forth above, claims 3, 5-8, 13 and 14 stand
together with claim 1.
THE REJECTION UNDER 35 U.S.C. § 102:
Since the teachings of the two Chu references are essentially identical
(see Answer, page 10) we will focus our attention on Chu ‘522. 1 Appellants do
not dispute that Chu ‘522 teach a method of modulating the transcription of
products which are subject to regulation by transcriptional control recognition
sequences by administering a therapeutically effective amount of an
oligonucleotide comprised of three segments, wherein the second segment links
1 We note that appellants do not argue the two references separately.
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