Appeal No. 2001-1686 Page 4
Application No. 08/363,998
the shiver and jumpy mutations; to study the effects of genes
encoding growth factors, oncogenic proteins or toxic peptides;
methods of making animal of [sic] models for nervous system
diseases or human painful conditions; to study in vivo neural
proteins to monitor changes in receptor density, cell number,
fiber growth, electrical activity or neurotransmission; and
methods of treatment, that is gene therapy.
Answer, pages 2-3.
The answer then carefully goes through the pertinent Wands factors,
setting forth facts why certain disclosed uses are not enabled by the
specification. See In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed.
Cir. 1988). According to the examiner, the issue on appeal is “whether or not the
claims as written have to be enabled for all of the disclosed uses.” Answer, page
22. The Answer asserts that the answer to that question is yes, contending that
“[m]ethod claims, in this regard, do not have the same standard as product
claims, which only need to be enabled for one disclosed use.” Id. While we
commend the examiner for her thorough analysis in the Answer, we reverse, but
do not reach the issue as framed by the examiner.1
According to the rejection, the specification fails to enable any person
skilled in the art to which it pertains, or with which it is most nearly connected, to
use the invention commensurate in scope of the claims. The examiner
acknowledges that the specification would enable the skilled artisan to practice
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007