Appeal No. 2003-1668 Page 6
Application No. 08/479,883
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.” Id., pages 9-10.
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).
“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
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