Appeal No. 2001-1651 Page 6
Application No. 09/238,972
the invention as broadly as claimed without having to resort to undue
experimentation. See In re Vaeck, 947 F.2d 488, 496, 20 USPQ2d 1438, 1445
(Fed. Cir. 1991). In considering this issue, we note that appellant is not required
to disclose every parameter encompassed by the claims. See In re Angstadt,
537 F.2d 498, 503, 190 USPQ 214, 218 (CCPA 1976). Furthermore, while some
experimentation may be necessary, that does not preclude enablement; what is
required is that the amount of experimentation “must not be unduly extensive.”
Atlas Powder Co. v. E.I. DuPont de Nemours & Co., 750 F.2d 1569, 1576, 224
USOQ 409, 413 (Fed. Cir. 1984).
On this record, the examiner finds (Answer, page 5),
the specification is only enabling for claims limited to an antisense
oligo consisting of SEQ ID NO:2 and a method of inhibiting CAT2
expression using said antisense oligo. The specification does not
enable any person skilled in the art to which it pertains, or with
which it is most nearly connected, to make and/or use the invention
commensurate in scope with … [claims 1-9 and 16].
According to the examiner (Answer, page 6), “[a]lthough the specification
provides guidance on a singular antisense oligo (SEQ ID NO: 2), it is well known
by those skilled in the art that identification of target sites in a given mRNA at
which antisense oligos bind to cause inhibition of translation is an unpredictable
art.”
With reference to Hoke, the examiner finds (Answer, page 7) that
screening
different sites on a given mRNA to find oligo binding sites for
inhibition of translation, may fail to identify such sites in the 5’
untranslated region, the coding region, or in the 3’ untranslated
region of the mRNA and that an oligo binding site that is located
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