Appeal No. 1996-0848
Application 07/624,053
Discussion
The rejection under 35 U.S.C. § 112, first paragraph
Claims 16-22, 24-25, 27-32, 34-35, and 42 stand rejected under 35 U.S.C.
§ 112, first paragraph, as failing to provide an enabling disclosure for the full scope of the
claimed invention.
To the extent that we understand the examiner's reasoning, this rejection is based
on the examiner's determination that the claims read on subject matter not enabled by the
specification. The examiner notes that pages 18 and 32-34 of the specification describe
the identification of MCF-positive clones and urges that the claimed cell lines are identified
as producing factor or factors that stimulate monocyte cytotoxicity, which are not
necessarily the single factor described in the specification. The examiner thus concludes
that the claimed invention is broader than the enabling disclosure. (Answer, page 8 and
Supplemental Answer, page 4).
While we would agree that the claims on appeal are not necessarily limited to a cell
line which produces a specific monocyte stimulating factor, on the record before us, the
examiner has failed to make any of the factual findings which would reasonably support a
rejection under the enablement requirement of 35 U.S.C. § 112, first paragraph. See In re
Wands, 858 F.2d 731, 8 USPQ2d 1400 (Fed. Cir. 1988). We, therefore, reverse the
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007