Appeal No. 2001-1290 Page 5
Application No. 08/950,032
structures recited in the claims and screening them for activity may be somewhat
time-consuming and repetitive, it does not constitute undue experimentation.”
Id., page 5 (citing Wands). Appellants conclude that “[g]iven the extensive
guidance and examples provided in the specification and the familiarity of those
in the field of medicinal chemistry with the screening approach taught for
identifying compounds having the desired steroid receptor modulator activity,
practice of the claimed methods is fully enabled by the specification and would
not require undue experimentation.” Id., page 6.
“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.” In re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513
(Fed. Cir. 1993).
In this case, we conclude that the examiner has not carried the initial
burden of showing prima facie nonenablement. The examiner seems to focus on
the lack of predictability involved in ligand/steroid hormone receptor binding and
the breadth of the claims. See the Examiner’s Answer, pages 3-5, and the
examiner’s conclusion on page 5: “[O]ne of ordinary skill in the art, even with
in vivo assays as agonists or antagonists for various steroid hormone receptors. See the
specification, pages 255-262.
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