Ex Parte Childers et al - Page 5



               Appeal No. 2003-0890                                                                          Page 5                   
               Application No. 09/706,683                                                                                             

                       As set forth in PPG Indus., Inc. v. Guardian Indus. Corp., 75 F.3d 1558, 1564, 37                              
               USPQ2d 1618, 1623 (Fed. Cir. 1996):                                                                                    
                       In unpredictable art areas, this court has refused to find broad generic                                       
                       claims enabled by specifications that demonstrate the enablement of only                                       
                       one or a few embodiments and do not demonstrate with reasonable                                                
                       specificity how to make and use other potential embodiments across the                                         
                       full scope of the claim.  See, e.g., In re Goodman, 11 F.3d 1046, 1050-52,                                     
                       29 USPQ2d 2010, 2013-15 (Fed. Cir. 1993); Amgen, Inc. v. Chugai                                                
                       Pharmaceutical Co., 927 F.2d. 1200, 1212-14, 18 USPQ2d 1016, 1026-28                                           
                       (Fed. Cir.), cert. denied, 502 U.S. 856 (1991); In re Vaeck, 947 F.2d at                                       
                       496, 20 USPQ2d at 1445.  Enablement is lacking in those cases, the court                                       
                       has explained, because the undescribed embodiments cannot be made,                                             
                       based on the disclosure in the specification, without undue                                                    
                       experimentation.  But the question of undue experimentation is a matter of                                     
                       degree.  The fact that some experimentation is necessary does not                                              
                       preclude enablement; what is required is that the amount of                                                    
                       experimentation “must not be unduly extensive.”  Atlas Powder Co., v. E.I.                                     
                       DuPont De Nemours & Co., 750 F.2d 1569, 1576, 224 USPQ 409, 413                                                
                       (Fed. Cir. 1984).  The Patent and Trademark Office Board of Appeals                                            
                       summarized the point well when it stated:                                                                      
                               The test is not merely quantitative, since a considerable                                              
                               amount of experimentation is permissible, if it is merely                                              
                               routine, or if the specification in question provides a                                                
                               reasonable amount of guidance with respect to the direction                                            
                               in which the experimentation should proceed to enable the                                              
                               determination of how to practice a desired embodiment of                                               
                               the invention claimed.                                                                                 
                       Ex parte Jackson, 217 USPQ 804, 807 (1982).                                                                    

               Here, it is not unreasonable to expect that a person skilled in the art would need to                                  
               perform some experimentation in order to determine the activity profile of a given                                     
               compound set forth in the rejected claims.  The key here is whether ascertaining the                                   
               activity profile of a given compound would require undue experimentation instead of                                    
               being performed in a routine manner.  The specification describes an assay that those                                  






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