Appeal No. 2003-1469 Page 7
Application No. 08/479,886
“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
Angstadt, 537 F.2d 498, 502-03, 190 USPQ 214, 218 (CCPA 1976). However,
there must be sufficient disclosure, either through illustrative examples or
terminology, to teach those of ordinary skill in the art how to make and how to
use the invention as broadly as it is claimed. This means that the disclosure
must adequately guide the art worker to determine, without undue
experimentation, which species among all those encompassed by the claimed
genus possess the disclosed utility.” Vaeck, 947 F.2d at 496, 20 USPQ2d at
1445 (footnote omitted). Whether the amount of experimentation required is
“undue” is determined in reference to the well-known Wands factors. See
Wands, 858 F.2d at 737, 8 USPQ2d at 1404.
In this case, we agree with Appellants that the examiner has not shown
that practicing the full scope of the claims would have required undue
experimentation. First, the scope of the claims is not inordinately broad: as the
examiner acknowledged, the claims require a mutation in one of 44 amino acids
and a second mutation in one of 22 positions. Examiner’s Answer page 8. The
examiner asserts that each of these mutations could substitute any of 19 amino
acids for the naturally occurring one at each position, id., but this assertion
ignores the guidance provided by the specification. The specification states that
the mutation in the amino acids corresponding to site 1 should at least preserve,
if not enhance, binding with the variant’s receptor. See page 10. Thus, the
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