Appeal No. 2001-1290 Page 6
Application No. 08/950,032
high level of skill, would not be able to use all the structurally diverse compounds
for treating a patient requiring steroid receptor therapy and for treating all the
different disease conditions as claimed without undue experimentation.”
Predictability, however, is not the only factor to consider, nor is the amount
of experimentation. In this case, the examiner’s concession that the specification
provides over 300 exemplary compounds is evidence of the routine nature of
making compounds within formulae recited in the claims. Likewise, the
specification discloses the results of testing numerous exemplary compounds in
an in vitro assay, suggesting that such testing would also be routine to those of
skill in the art, especially given the concededly high level of skill in the art. Thus,
the lack of predictability in the art is ameliorated by the apparently routine nature
of making and testing other compounds encompassed by the claims.
The examiner also appears to be concerned with the skilled artisan
“be[ing] able to use all the structurally diverse compounds for treating a patient
requiring steroid receptor therapy and for treating all the different disease
conditions as claimed.” Examiner’s Answer, page 5 (emphasis added). Thus,
the examiner’s concern may be that the formulae recited in the claims
encompass compounds that will be inoperative therapeutically.
By itself, however, the presence of inoperative embodiments in the claim
does not support a conclusion of nonenablement. See Atlas Powder Co. v. E.I.
Du Pont De Nemours & Co., 750 F.2d 1569, 1576, 224 USPQ 409, 414 (Fed.
Cir. 1984): “Even if some of the claimed combinations were inoperative, the
claims are not necessarily invalid. ‘It is not a function of the claims to specifically
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