Appeal No. 2003-1993
Application No. 09/470,526
In our view the examiner has not provided sufficient evidence or analysis to
indicate why one of ordinary skill in the art having read the disclosure, would not have
been able to recognize that the inventors invented the subject matter within the scope
of the claims. The rejection of the claims for lack of written description is reversed.
Enablement
Claims 2-11, 31, 33 and 35-36 stand rejected under 35 U.S.C. § 112, first
paragraph for lack of enablement.
It is the examiner's position that the specification is enabling for an isolated wee1
nucleic acid comprising a polynucleotide encoding SEQ ID NO:2 and a polynucleotide
comprising SEQ ID NO:1, but does not reasonably provide enablement for a wee1
polynucleotide having 80% identity to the coding region of SEQ ID NO:1. Answer, page
6.
Enablement is a legal determination of whether a patent enables one skilled in
the art to make and use the claimed invention, Raytheon Co. v. Roper Corp., 724 F.2d
951, 960, 220 USPQ 592, 599 (Fed. Cir. 1983), and is not precluded even if some
experimentation is necessary, although the amount of experimentation needed must
not be unduly extensive. Atlas Powder Co. v. E.I. Du Pont De Nemours & Co., 750
F.2d 1569, 1576, 224 USPQ 409, 413 (Fed. Cir. 1984); W.L. Gore and Associates v.
Garlock, Inc., 721 F.2d 1540, 1556, 220 USPQ 303, 315 (Fed. Cir. 1983).
Nothing more than objective enablement is required, and therefore it is irrelevant
11
Page: Previous 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 Next
Last modified: November 3, 2007