Appeal 2007-1623
Application 09/981,845
It would require an indeterminate quantity of unpredictable
investigational experimentation of the skilled artisan to
determine which integrin receptor bound the claimed
osteopontin peptide fragments, then discern which cell type
expressed that specific receptor and if that cell type was
conducive to osseointegration activity. Without sufficient
guidance, the amount of experimentation would be undue for
one skilled in this art. Thus only osteoprogenitor cells and
αvβ3 integrin receptors meet the limitations of the instant
claims.
(Id. at 5-6.)
Appellants argue that “[i]t is well known in the art that osteopontin
binds to more than one integrin receptor” (Br. 7, citing Hu), and that “SEQ
ID NO 11 and 15 have conserved domains similar to osteopontin. One of
ordinary skill in the art would expect the claimed peptides to bind to
receptors capable of binding osteopontin” (id.). Appellants also argue that
the
ability of the peptides recited in claim 1 to bind to at least one
integrin receptor on the cell surface is in fact demonstrated by
the ability of anti-integrin antibodies to inhibit cell
attachment. . . . There is no legal requirement that the claimed
peptides bind all integrins or to all cell types for the peptides to
have the specified utility. . . . As long as the specification
discloses at least one method for making and using the claimed
invention that bears a reasonable correlation to the entire scope
of the claim, then the enablement requirement of 35 U.S.C. 112
is satisfied.
(Id. at 7-8.)
We agree with Appellants that the Examiner has not adequately
shown that practicing the claimed method would require undue
experimentation. “[T]he question of undue experimentation is a matter of
degree. The fact that some experimentation is necessary does not preclude
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