Appeal No. 2004-1259
Application No. 09/832,355
has not established with appropriate evidence that any inoperable embodiments are
within the scope of the claimed non-VEGF second peptide or that any such
embodiments would have been significant in number to call into question the
patentability of the claims.
As with the VEGF peptides discussed above, we do not agree that the examiner
has put forth sufficient argument or evidence that the specification does not enable
non-VEGF peptides within the scope of the claims. The specification, pages 20-32,
paragraphs [0050] to [0070], describes various classes of subspecies of non-VEGF
peptides which, appellants allege, possess angiogenic properties. Many of the
subspecies are supported by reference to scientific publications. As we have found that
the examiner has not established a prima facie case of lack of enablement in the first
instance, we do not reach appellants’ evidence in support of enablement. This rejection
of the claims for lack of enablement is reversed.
Upon review of the relevant portions of the specification indicated above with
respect to enablement, we find such portions also adequately describe the claimed
invention. In our view appellants have described the claimed subject matter in the
specification clearly enough that one having ordinary skill in the pertinent art would
recognize from the disclosure that appellants invented the subject matter including
those limitations. In view of the above, this aspect of the written description rejection is
reversed.
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