Appeal No. 2002-1631 Page 7
Application No. 08/213,433
the sort of experimentation required to practice the claimed invention would have been
viewed as reasonable by those skilled in the art, and also as evidence that the field had
reached that stage of “[u]sefulness in patent law” described in In re Brana, despite a
general recognition of the unpredictability of gene therapy.
In our view, the examiner has not established that the experimentation required
to practice the claimed invention would have been undue, and therefore impermissible,
in this art, where a considerable amount of experimentation would have been regarded
as acceptable. Accordingly, the rejection of claims 26 through 37 under the first
paragraph of 35 U.S.C. § 112 is reversed.
REVERSED
)
William F. Smith )
Administrative Patent Judge )
)
) BOARD OF PATENT
)
Toni R. Scheiner ) APPEALS AND
Administrative Patent Judge )
) INTERFERENCES
)
)
Eric Grimes )
Administrative Patent Judge )
William S. Feller
Morgan & Finnegan
345 Park Avenue
New York, NY 10154
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