Appeal No. 2004-1259
Application No. 09/832,355
re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). Nothing more
than objective enablement is required, and therefore it is irrelevant whether this
teaching is provided through broad terminology or illustrative examples. In re
Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA 1971).
In our view, the examiner has not provided sufficient argument or evidence to
support the position that the specification does not enable or describe VEGF peptides
which promote angiogenesis or bone growth. Because the claim merely requires that
the VEGF peptides possess one or the other of the functions of angiogenesis or bone
growth, the specification need only enable one or the other of these functions. The
specification, particularly at pages 2-4 and pages 7-14, describes a representative
group of VEGF peptides having angiogenesis promoting activity. As indicated by the
cited prior art, VEGF peptides as a class are well known to those of ordinary skill in the
art. See, e.g., Rockwell, columns 1-2 and Gill, column 2. Moreover, the specification at
pages 13 and 14, numbered paragraphs 36 and 37, describes how one of ordinary skill
in the art can test for and confirm that peptides possess angiogenesis promoting or
bone growth promoting activities.
The examiner has not provided a careful consideration of the level of ordinary
skill in the art, or appropriate evidence to establish that any experimentation required to
determine angiogenesis promoting and bone growth promoting activities, in view of the
knowledge in the art of VEGF peptides, would have been undue experimentation. As
we have found that the examiner has not established a prima facie case of lack of
10
Page: Previous 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 Next
Last modified: November 3, 2007