Appeal No. 2003-1722 Page 7
Application No. 09/041,343
well as the specification’s failure to teach how to use specific receptor
compounds that might be made. See the Examiner’s Answer, pages 7-9.
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 specific
members of the claimed libraries that have a particular biological activity. See,
e.g., pages 17-21.
The specification also provides working examples of receptor libraries
containing synthetic receptors that bind the neuropeptides Leu Enkephalin and
Met Enkephalin. See pages 72-81. Based on the results of these examples, the
specification concludes that “the methods described [in the specification] may
allow the development of receptors for almost any substrates even without
knowing the exact shape, size and arrangement of functionalities involved.”
Page 82.
The examiner has not provided adequate evidence or sound scientific
reasoning to support a conclusion to the contrary. Thus, the examiner has not
shown that undue experimentation would have been required to either make or
use the claimed synthetic receptor libraries. The rejection for nonenablement is
reversed.
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