Appeal No. 2006-1993 Page 6
Application No. 10/147,651
While the examiner engages in a Wands analysis, see In re Wands, 858
F.2d 731, 737, 8 USPQ2d 1400, 1403 (Fed. Cir. 1988) (noting that facts that
should be considered in determining whether a specification is enabling include:
(1) the quantity of experimentation necessary to practice the invention, (2) the
amount of direction or guidance presented, (3) the presence or absence of
working examples, (4) the nature of the invention, (5) the state of the prior art, (6)
the relative skill of those in the art, (7) the predictability or unpredictability of the
art, and (8) the breadth of the claims), the examiner’s primary concern appears to
be that “[t]he specification, however, discloses only one mouse that exhibits this
claimed combination of genotype and phenotype, that is a transgenic mouse
whose genome comprises a homozygous disruption of SR-BI and ApoE.”
Examiner’s Answer, page 4. According to the examiner, “[t]here is no disclosure
in the specification that other mice are available with decreased expression of
active SR-BI and ApoE that develop atherosclerotic plaques in the aortic sinuses
and progressive heart block.” Id. The examiner, however, provides no evidence
that it would require an undue amount of experimentation to produce additional
knockout mice and test them for the phenotype required by the claims.
The examiner notes that single knockout mice are reported in the
specification, but that no analysis of the genotypes of those mice is reported.
See id. at 5. The examiner thus concludes that “there is no guidance in the
specification for a mouse with decreased expression of active SR-BI and Apo-E
that develop atherosclerotic plaques in the aortic sinuses and progressive heart
block other than the SR-BI -/- ApoE -/- mouse.” Id.
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