Appeal No. 2002-1630 Page 15
Application No. 09/175,713
While the examiner has conceded that those of skill in the art could have
made the chemokine variants encompassed by the claims, in view of the breadth
of claim 5, a great deal of experimentation would have been involved in
determining which of the variants were active and which were not. While
Appellants are correct in arguing that there is no per se rule requiring
predictability in extrapolating beyond the exemplified embodiments, predictability
or the lack thereof is one of the factors to be considered in the Wands analysis.
See Atlas Powder Co. v. E.I. Du Pont De Nemours & Co., 750 F.2d 1569, 1576,
224 USPQ 409, 414 (Fed. Cir. 1984): “Even if some of the claimed combinations
were inoperative, the claims are not necessarily invalid. . . . Of course, if the
number of inoperative combinations becomes significant, and in effect forces one
of ordinary skill in the art to experiment unduly in order to practice the claimed
invention, the claims might indeed be invalid.”
In view of the sweeping breadth of claim 5, and the absence of any basis
for predicting which chemokine variants will retain activity, a great deal of
experimentation would have been required to distinguish between operative and
inoperative embodiments. We agree with the examiner that the amount of
experimentation required to practice the full scope of claim 5 would have been
undue. We therefore affirm the rejection of claims 1-5, 10-14, 17, and 18 for
nonenablement.
b. Claims 6-9
The examiner included claims 6-9 in the rejection for nonenablement. The
examiner explained that these claims were included in the rejection because they
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