Appeal No. 2002-1630 Page 11
Application No. 09/175,713
the art would be able [sic, would have been able] to make the claimed
molecules.” Id., page 7.
The examiner nonetheless concluded that the claims were not enabled
throughout their full scope, based on several factors. First, the examiner found
that the claims are extremely broad, in that they encompass modified
chemokines that have no structural relationship to each other, as well as “a
potentially infinite number of variants of these modified chemokines.” See the
Examiner’s Answer, page 6. The examiner also found that the specification
provides only one working example of a modified chemokine having enhanced
function relative to the unmodified chemokine, and the specification does not
provide guidance to allow those of skill in the art to predictably identify and use
other functional, amino-modified chemokines. Id., pages 6 and 7. Finally, the
examiner found that the effect of additions or variations, within the naturally
occurring amino acid sequence of a chemokine, have unpredictable effects on
the function of the chemokine. Id., page 6.
The examiner therefore concluded that practicing the claimed invention
throughout its full scope would have required undue experimentation. Id., page
7.
Appellants argue that the examiner has conceded that the specification
would have enabled those skilled in the art to make the claimed products.
Appeal Brief, page 12. With respect to the “how to use” prong of enablement,
Appellants argue that
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