Appeal No. 2001-1686 Page 6
Application No. 08/363,998
* * * *
We agree that appellants’ claims are not too broad “to the
point of invalidity” just because they read on even a large number
of inoperative embodiments, since it seems to be conceded that a
person skilled in the relevant art could determine which conceived
but not-yet-fabricated embodiments would be inoperative with
expenditure of no more effort than is normally required of a lens
designer checking out a proposed set of parameters.
Id. at 735, 169 USPQ at 302 (citations omitted); see also Angstadt, 537 F.2d at
504, 190 USPQ at 219 (“Without undue experimentation . . . the combinations
which do not work will readily be discovered and, of course, nobody will use them
and the claims do not cover them.”)
The issue thus becomes whether a person skilled in the relevant art could
determine which uses disclosed in the specification are enabled and distinguish
them from those that are not using the ordinary effort in the field of endeavor to
which the claim is drawn, i.e., the art of protein expression. We find that the
person skilled in the art could discern the uses of the claimed method of protein
expression enabled by the specification from those that are not.
Our finding is based, in significant part, on the thorough reasoning
provided by the scope of enablement rejection set forth by the examiner in her
answer. In the Appeal Brief, appellants set forth both therapeutic, as well as
non-therapeutic uses for the claimed method of expressing a gene sequence in
a neuronal cell of the central nervous system. See Appeal Brief, pages 10-11.
In response, the examiner, as set forth supra, details those uses for the claimed
method that are enabled, and then distinguishes those uses that the examiner
contends are not enabled. See Examiner’s Answer, pages 2-3. Thus, the
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