Appeal No. 2001-1293 Page 13
Application No. 08/464,271
conclusion of nonenablement. As we discussed above, the remaining grounds
set out by the examiner are inadequate to support the rejection. Therefore, the
examiner has not shown that claims 40 and 41 are not enabled for a method of
making transgenic organisms.
In addition to the “transgenic animals” analysis discussed in detail above,
the examiner set out a second enablement analysis, based on the disclosed use
of the claimed system in gene therapy. We do not agree that any potential
problems that might be encountered using the claimed system in gene therapy
support a rejection for nonenablement. The specification discloses that the
claimed method can be used to “create valuable animal models.” Page 19.
There is no rejection for lack of utility before us, and the examiner has conceded
that the claims are enabled with respect to mice lacking lymphoid cells. See the
Examiner’s Answer, page 4. Thus, the examiner does not appear to dispute that
tissue-specific cell ablation would be useful in making animal models for
research.
“The enablement requirement is met if the description enables any mode
of making and using the invention.” Johns Hopkins Univ. v. CellPro Inc., 152
F.3d 1342, 1361, 47 USPQ2d 1705, 1714 (Fed. Cir. 1998) (quoting Engel Indus.,
Inc. v. Lockformer Co., 946 F.2d 1528, 1533, 20 USPQ2d 1300, 1304 (Fed. Cir.
1991)). Since the specification describes one method of making and using the
invention of claims 40 and 41, it enables these claims, whether or not the claimed
method is also enabled for use in gene therapy. Therefore, we reverse the
examiner’s rejection with respect to claims 40 and 41.
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