Appeal No. 2002-1562
Application No. 09/183,454
Other issues
1. Upon return of the application to the examiner, we recommend that the
examiner carefully revisit the issue of enablement under 35 U.S.C. § 112, first
paragraph, with respect to the pending claims. The record reflects that the examiner
previously made and withdrew a rejection of the claims for lack of enablement, based
upon an argument that the specification failed to teach how to make specific chelated
forms of the bioconjugate. See Paper No. 5, pages 3-5.
In reconsidering the issue of enablement, the examiner should begin by
determining the scope of the pending claims and determine whether the specification
supports and teaches how to use the claimed invention within the full scope of the
claimed invention. In particular, the examiner should review the specification to
determine whether the specification supports the full scope of the claimed method of
treatment. In this regard, the examiner should carefully consider the holding in Enzo
Biochem Inc. v. Calgene Inc., 188 F.2d 1362, 1371, 52 USPQ2d 1129, 1136 (Fed. Cir.
1999). In Enzo, the Federal Circuit concluded, based on the evidence before the
district court in that case at that time, that antisense technology was highly
unpredictable. In such unpredictable art areas, the Federal Circuit has refused to find
broad generic claims enabled by specifications that demonstrate the enablement of
only one or a few embodiments and do not demonstrate with reasonable specificity how
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