Appeal No. 1996-3170
Application No. 08/180,371
required by § 112, first paragraph." (Answer, page 3). The first paragraph of 35 U.S.C. §
112 requires that the specification contain a written description of the claimed invention
and the manner and process of making and using that invention in such full, clear, concise,
and exact terms as to enable any person skilled in the art to which that invention pertains to
make and use that invention. In re Wright, 999 F.2d 1557, 1561, 27 USPQ2d 1510, 1513
(Fed. Cir. 1993).
On this record, the examiner has acknowledged that the disclosure in support of the
presently claimed invention is sufficient to meet the "written description", "how to make",
and "best mode" requirements of 35 U.S.C. § 112, first paragraph. (Answer, page 8). In
addition, the examiner does not dispute that "a protein having CSF activity would indeed
be 'useful'." (Id.)
In explaining the basis for this rejection, the examiner states (Answer, page 3-4):
The specification provides confusing and conflicting teachings about "TC-
CSFs" generally, and the structural relationship of the peptide fragment now
claimed to the various other species disclosed is so insubstantial that no
conclusions regarding its functional properties may properly be drawn from
comparisons with other "TC-CSFs".
The examiner concludes (Answer, page 7):
In summary, the data presented in the disclosure are not credible, and the
attempts to reconcile fundamental differences between conflicting results are
not logically consistent. In view of the evident lack of any evolutionary
relationship between the human "TC-CSF" and the other proteins
characterized in the specification and the confusing teachings relative to the
claimed peptide per se, it cannot reasonably be predicted that the "TC-CSF
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