Appeal No. 2004-2201 Page 7
Application No. 09/788,476
conclusion that claim 1 on appeal is different from the hypothetical claim of Example 9
of the Guidelines and therefore claim 1 on appeal does not comply with the written
description requirement. This is insufficient.
The examiner’s rejection under 35 U.S.C. § 112, first paragraph (written
description), is reversed.
2. Enablement.
In stating the rejection on pages 5-6 of the Examiner’s Answer, the examiner has
focused on the purported need to screen a “large quantity of clinical samples” in order to
enable claim 1 throughout its scope. In reviewing the examiner’s response to
arguments in regard to this rejection on pages 10-13 of the Examiner’s Answer we find
the examiner again focuses on the need to screen “a large quantity of clinical samples.”
Id., page 10. As stated at page 11 of the Examiner’s Answer, “in order to make the full
scope of the invention, one skilled in the art has to screen a large quantity of clinical
samples from liver or pancreatic tissue of patients having HCC or pancreatic
adenocarcinoma, followed by sequence [sic] the nucleic acid composition.”
As set forth in PPG Indus., Inc. v. Guardian Indus. Corp., 75 F.3d 1558, 1564,
37 USPQ2d 1618, 1623 (Fed. Cir. 1996):
In unpredictable art areas, this court has refused to find broad generic
claims enabled by specifications that demonstrate the enablement of only
one or a few embodiments and do not demonstrate with reasonable
specificity how to make and use other potential embodiments across the
full scope of the claim. See, e.g., In re Goodman, 11 F.3d 1046, 1050-52,
29 USPQ2d 2010, 2013-15 (Fed. Cir. 1993); Amgen, Inc. v. Chugai
Pharmaceutical Co., 927 F.2d. 1200, 1212-14, 18 USPQ2d 1016, 1026-
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