Appeal No. 2005-1442 Page 7
Application No. 09/734,786
was not nonenabled merely because it encompassed one difficult-to-achieve outcome.
The same reasoning applies here: the examiner may be correct that achieving clinically
useful gene therapy using the claimed method would require undue experimentation,
but the claims are not nonenabled merely for encompassing that difficult-to-achieve
outcome.
The claims are directed to methods of introducing a nucleic acid into a
mammalian subject or delivering a nucleic acid to a hair follicle or intact tissue. The
examiner has not adequately explained why the specification does not enable those
skilled in the art to introduce a nucleic acid into a mammalian subject, or deliver a
nucleic acid to a hair follicle or intact tissue, without undue experimentation. We
therefore reverse the rejection for nonenablement.
REVERSED
Joan Ellis )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Toni R. Scheiner )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Eric Grimes )
Administrative Patent Judge )
EG/dym
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