Appeal No. 96-0051 Page 3
Application No. 07/987,256
2. A written description and enablement rejection
under 35 U.S.C. § 112[1] of claims 37 and 40; and
3. An enablement rejection under section 112[1] of
claims 21, 27, 33, 34, 37, 40, 41, 51-55, 61, and 62.
DISCUSSION
Obviousness-type double-patenting
At the hearing, in response to a direct question from the bench
on the matter, counsel for Appellants stated that they are no longer
contesting the double-patenting rejection. Counsel further indicated
that an appropriate terminal disclaimer would be submitted when the
application is returned to the examiner. In light of this
concession, the obviousness-type double-patenting rejection of
claims 21, 25, 27, 33, 34, 37, 40, 54, and 553 in view of the claims
of Appellants' 07/721,761 application (now United States Patent
5,475,099) must be affirmed.
Support for the antisense claims
The examiner has rejected claims 37 and 40 for lacking both
written description and enabling description in the specification.
The written description requirement and the enablement requirements
are separate requirements. E.g., In re Wilder, 736 F.2d 1516, 1520,
3 It is not clear from the record why claims 41, 51-53, 61,
and 62 were not also subject to this rejection. Since a terminal
disclaimer will encompass all of the claims in the resulting patent,
however, the question is moot on this record.
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