Appeal No. 2007-0079 Page 9
Application No. 10/159,749
Accordingly, we reverse the rejection of claims 1-6 under 35 U.S.C. § 112,
first paragraph, as containing new matter which is not supported by the
disclosure.
Enablement:
According to the examiner (Answer, page 9), the specification does not
provide an enabling disclosure of the claimed method “with respect to any
deletion mutant of SEQ ID NO:[ ]2 or 8 capable of binding and antagonizing said
BMP.” While the examiner recognizes that appellants specification describes the
full length peptides and thirty specific deletion mutants that exhibit the binding
and antagonizing activity required by the claimed invention, the examiner finds
that the claims “encompass a substantial number of species or variants for which
requisite activity is not established, and therefore the specification’s teachings
are not of commensurate scope with the claims.” Answer, bridging paragraph,
pages 9-10.
Relying on Skolnick, Vukecevic, Tischer and Kopchick as she did in the
written description rejection, the examiner finds (Answer, page 11), “the artisan
would not expect functional conservancy within any deletion mutant as claimed.”
We disagree.
“When rejecting a claim under the enablement requirement of section 112,
the PTO bears an initial burden of setting forth a reasonable explanation as to
why it believes that the scope of protection provided by that claim is not
adequately enabled by the description of the invention provided in the
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