Appeal No. 2004-2314 Page 7
Application No. 09/971,101
polypeptides because appellants[’] specification has not given guidance as to
how to … use the majority of those polypeptides of the claimed genus….”
The examiner relies on Ngo (Answer, page 18), “as evidence to show that
the relationship between the sequence of a peptide and its tertiary structure (i.e.
its activity) are not well understood and are not predictable….” The examiner,
however, fails to explain how Ngo relates to using the claimed polypeptides to
prepare antibodies. In this regard, we agree with appellants (Brief, page 16),
[t]he flaw with the instant rejection is to assume that the only utility
for the peptides and polypeptides of the instant claims is that [they]
must [have] … a functional pol κ polypeptide [activity]. Much to the
contrary, § 112, first paragraph only requires that there be some
way to make and use the claimed subject matter. As described in
the specification at pages 31-39, there is an enabled use of even
non-functional fragments of pol κ polypeptide for the production of
anti-pol κ antibodies.
The examiner does not dispute that there is some use for the polypeptides
encompassed by SEQ ID NO:2 or SEQ ID NO:4, accordingly, absent evidence to
the contrary, we find no reason to believe that the use of fragments of these two
sequences to produce antibodies to produce antibodies to the polypeptides
having SEQ ID NO:2 or SEQ ID NO:4 is not enabled by appellants specification.
To the extent that the examiner is of the opinion that only a “small population” of
the claimed polypeptides would be useful in such a manner, the examiner has
failed to articulate the reasoning or evidence relied upon to support such a
conclusion. “The enablement requirement is met if the description enables any
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