Appeal No. 2002-1630 Page 13
Application No. 09/175,713
Cir. 1988). Those considerations include the quantity of experimentation
needed, the amount of guidance provided, the presence of working examples,
the nature of the invention, the state of the prior art, the skill of those in the art,
the degree of unpredictability involved, and the breadth of the claims. See id.
In this case, we agree with the examiner that the broadest of the claims on
appeal (claims 1-5, 10-14, 17, and 18) are not enabled throughout their full
scope. However, we conclude that the examiner’s reasoning does not suffice to
show nonenablement of the group of narrower claims (claims 6-9) that Appellants
separately argue.
a. Claims 1-5, 10-14, 17, and 18
Claims 1-5, 10-14, 17, and 18 stand or fall together. Appeal Brief, page 4.
We will consider claim 5 as representative. As discussed above (pages 3-4),
claim 5 encompasses chemokines modified at the amino terminus, where the
chemokine can be one of forty-nine naturally occurring chemokines, or it can be
a chemokine “derived from” any of the forty-nine enumerated chemokines “by
any kind of alteration, addition, insertion, deletion, mutation, substitution,
replacement, or other modification.” Specification, page 17. We agree with the
examiner that undue experimentation would have been required to practice the
full scope of claim 5.
Most of the Wands factors favor a conclusion of nonenablement. The
scope of claim 5 is enormous: the claim encompasses not just the forty-nine
enumerated chemokines, modified in one of three ways at the amino terminus,
but also encompasses an amino-terminal modified chemokine that can be
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