Appeal No. 2002-2030 Page 10
Application No. 09/294,663
that other, similar IIM-encoding genes were known in the art. On the contrary,
the specification states “[p]rior to the present invention, no intestinal mucin had
been identified from invertebrates.” Page 6.
In view of the lack of guidance in the specification and the limited working
examples, the breadth of the claims and resulting quantity of necessary
experimentation, and the lack of additional guidance in the prior art, we agree
with the examiner that practicing the full scope of the claims would have required
undue experimentation. Since the claims are not commensurate with the
enabling scope of the disclosure, they are not in compliance with 35 U.S.C.
§ 112, first paragraph.
Appellants do not dispute that “the claims are broad generic claims . . .
and the nature of the invention is biological and complex.” Appeal Brief, page 10.
Appellants also concede that “[c]learly the experimentation needed to practice
the invention is extensive and quite complicated.” Id., page 11. Appellants
argue, however, that such experimentation is considered routine in the field of
molecular biology. Id. Appellants also argue that all of the techniques required
to isolate other IIM-encoding genes are well known in the art. Id. at 10-11.
Appellants conclude that the balance of the Wands factors supports enablement
of the present claims.
Appellants’ argument is not persuasive. Appellants place heavy reliance
on the specification’s disclosure that several other insect species express
proteins that cross-react with antibodies against T. ni IIM protein. See the
Appeal Brief, page 10, last paragraph, and page 11, last paragraph. This
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