Appeal No. 2005-2739 Page 8
Application No. 09/966,893
“has not provided any basis for disputing the ability of the skilled artisan to produce the
claimed pharmaceutical compositions . . . [or] to administer such compositions by
conventional techniques.” Id.
We find that the examiner has not adequately explained why practicing the full
scope of the claims would have required undue experimentation. Given the guidance
and direction set forth in the specification, the process of making and using proteins with
the properties required by the claims would appear to require nothing more than routine,
iterative experimentation. In any case, it is well settled that “appellants are not required
to disclose every species encompassed by their claims even in an unpredictable art.”
In re Angstadt, 537 F.2d 498, 504, 190 USPQ 214, 218 (CCPA 1976).
The rejection of claims 8-13 under 35 U.S.C. § 112, first paragraph, for lack of
enablement is reversed.
Anticipation
Turning to the rejection of claims 8-13 under 35 U.S.C. § 102(a), we find that the
claimed subject matter is not identically described by Sharp.1 As stated in In re Arkley,
455 F.2d 586, 587, 172 USPQ 524, 526 (CCPA 1972), an anticipatory reference under
35 U.S.C. § 102
. . . must clearly and unequivocally disclose the claimed compound or
direct those skilled in the art to the compound without any need for picking,
choosing, and combining various disclosures not directly related to each
other by the teachings of the cited reference. Such picking and choosing
may be entirely proper in the making of a 103, obviousness rejection,
where the applicant must be afforded an opportunity to rebut with objective
evidence any inference of obviousness which may arise from the similarity
of the subject matter which he claims to the prior art, but it has no place in
the making of a 102, anticipation rejection.
1 Sharp, International Application WO 00/39150, published July 6, 2000
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