Appeal No. 2007-0079 Page 13
Application No. 10/159,749
the claims. Accordingly, we do not find the examiner’s reliance on Vukecevic
and Tischer persuasive.
Kopchick speaks to the specific single amino acid mutation in a vertebrate
growth hormone that changes the activity of the protein from growth promoting to
growth inhibiting. While the mutation in Kopchick may be a deletion or a
substitution, there is no evidence on this record that such a change will occur
with the deletion mutations before us on appeal. To the contrary, each of the
thirty exemplary deletion mutants set forth in appellants’ specification possess
the activity required by the claims. Further, to the extent that a particular deletion
mutant did not posses the activity set forth in the claims, it is outside of the scope
of the claimed invention.
Accordingly, we are not persuaded by the evidence provided by the
examiner in support of the enablement rejection.
D. Undue experimentation:
In light of the factual considerations reviewed above, we find that the
evidence of record fails to support the examiner’s conclusion that it would require
undue experimentation to practice the full scope of the claimed method. Answer,
page 11. In this regard, we note that some experimentation, even a considerable
amount, may not be “undue” if it is merely routine, or if the specification provides
a reasonable amount of guidance as to the direction in which the experimentation
should proceed. See In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404
(Fed. Cir. 1988). In this case, appellants have provided the full length sequences
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