Appeal No. 2003-2084 Page 8
Application No. 08/241,061
examples directed to specific crosstalk inhibitors" (Examiner's Answer, page
13)(emphasis in original). Merely pointing to the breadth of a claim limitation does not
establish that that claim limitation does not enjoy written descriptive support as required
by 35 U.S.C. § 112, first paragraph. On this record, we do not find that the examiner
has established a prima facie case of lack of written description for claims 98 and 99.
The rejection under 35 U.S.C. § 112, first paragraph (written description) of
claims 98 and 99 is reversed.
3. Enablement Rejection of Claims 98-102.
The examiner considers the specification to be enabling for compositions
"comprising specific crosstalk Inhibitors (as in figures 1C-1F) and ligand conjugate,
[sic]” but not for “any composition comprising ligand analogue conjugate and any
crosstalk inhibitors." Examiner's Answer, page 6. In support of the rejection, the
examiner provides an analysis of the factors set forth in In re Wands, 858 F.2d 731,
737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988), i.e., (1) the quantity of experimentation
necessary, (2) the amount of direction or guidance presented, (3) the presence or
absence of working examples, (4) the nature of the invention, (5) the state of the prior
art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the
art, and (8) the breadth of the claims.
We first point out that application 07/683,456 is stated to be a parent application
of this application. U.S. Patent No. 5,525,524 ('524 patent) also traces its parentage to
application 07/683,456. In response to an obviousness-type double patenting rejection
based upon the claims of the '524 patent, appellants have filed a terminal disclaimer.
Paper No. 43, April 23, 1999. Claim 3 of the '524 patent reads as follows:
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