Appeal No. 2003-0998 Page 8
Application No. 08/676,143
that those skilled in the art would expect synthetic receptors having a monocyclic
aliphatic template to behave similarly to the exemplified templates.
The examiner’s apparent concern with the specification’s disclosure is that
it does not show all of the templates encompassed by the claims. Such a
showing, however, is not required to provide enablement. “It is well settled that
patent applicants are not required to disclose every species encompassed by
their claims, even in an unpredictable art.” In re Vaeck, 947 F.2d 488, 496, 20
USPQ2d 1438, 1445 (Fed. Cir. 1991). All that is required by § 112 is that the
disclosure allow those skilled in the art to practice the claimed invention without
undue experimentation.
With regard to using the claimed libraries, the examiner cites the
unpredictability of the properties of compounds that have not yet been made, as
well as the specification’s failure to teach how to use specific compounds that
may be made as part of the claimed libraries. See the Examiner’s Answer,
pages 6-8.
These concerns are not enough to show that undue experimentation
would have been required to use the claimed libraries. The specification
discloses that the synthetic receptors making up the claimed libraries will have
different properties depending on the length and chemical composition of the
template and oligomers. See pages 23-29. As a result, combinatorial synthesis
produces “a receptor library containing a diverse and numerous number of
molecules.” Page 29. The specification also discloses assays to identify
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