Appeal No. 2003-1469 Page 6
Application No. 08/479,886
The examiner considered the factors set out in In re Wands, 858 F.2d 731,
737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988), and concluded that “the breadth of
the instant claims is not commensurate in scope with the specification.”
Examiner’s Answer, pages 8-9. The examiner summed up her position as
follows: “Unless one has a reasonable expectation that any one material
embodiment of the claimed invention would be more likely than not to function in
the manner disclosed or the instant specification provides sufficient guidance to
permit one to identify those embodiments which are more likely to work than not
without actually making and testing them, then the instant application does not
support the breadth of the claims.” Examiner’s Answer, page 10.
Appellants argue that the Wands factors do not support the examiner’s
conclusion. See the Appeal Brief, pages 5-6. In particular, Appellants argue that
no more than routine experimentation would have been required to make the
claimed protein variants and to assay their binding properties. See id., pages 7-
8. Appellants argue that the examiner’s requirement for sufficient guidance to
predict the properties of variants within the scope of the claims is contrary to
case law, citing In re Angstadt, 537 F.2d 498, 190 USPQ 214 (CCPA 1976). See
the Appeal Brief, pages 9-10.
The examiner bears the initial burden of showing nonenablement. See In
re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993).
That some experimentation is required does not suffice to show nonenablement;
“the issue is whether the amount of experimentation required is ‘undue.’” In re
Vaeck, 947 F.2d 488, 495, 20 USPQ2d 1438, 1444 (Fed. Cir. 1991).
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