Appeal No. 2001-2308
Application 07/704,578
In regard to Weissenbach, we note that the reference teaches a method of inducing
and fractionating mRNAs encoding an interferon activity, making a cDNA from the
fractionated mRNA, partial cDNAs (of undisclosed sequence) encoding “Hu IFN-$2", a
specific mRNA hybrid-selected by the cDNA, and an isolated protein made by in vitro
translation of the mRNA (Figure 4, lanes 7-9). In vitro translation products are the only
proteins disclosed in this publication. See figures 2 and 4. The translation products are
not purified free of other proteins; at best, they are immunoprecipitated. It is not clear to
us, and the examiner has not explained, how the translation products disclosed in this
publication meet the claim limitation of “substantially free of other protein”.
In regard to Zilberstein, the reference mentions a biochemical fractionation
procedure which yields “IFN-$2" and preparation of antisera. However, the publication
refers to an unpublished document for details. Thus, it is not clear whether the reference
enables the fractionation procedure4. The reference also discloses a protein made by
rodent cell lines transfected by human genes. Being rodent cells, the cells would not
4 See In re Payne, 606 F.2d 303, 314, 203 USPQ 245, 255 (CCPA 1979)
(“References relied upon to support a rejection under 35 U.S.C. § 103 must provide an
enabling disclosure, i.e., they must place the claimed invention in the possession of the
public. In re Brown, 51 CCPA 1254, 1259, 329 F.2d 1006, 1011, 141 USPQ 245, 249
(1964). An invention is not ‘possessed’ absent some known or obvious way to make it. In
re Hoeksema, 55 CCPA 1493, 1500, 399 F.2d [sic 269]. 274, 158 USPQ 596, 601
(1968).”) See also In re Vaeck, 947 F.2d 488, 495, 20 USPQ2d 1438, 1444 (Fed. Cir.
1991) (To be enabling a disclosure must teach persons skilled in the art to make and use
the claimed invention without undue experimentation.).
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