Appeal No. 1997-2319
Application No. 08/147,707
Nevertheless, the examiner argues that “[t]he teachings provided in the disclosure do
not teach the artisan how to use all the cell populations which can be selected by
various combinations of the presence or absence of CD34, CD38, and all of the IL-7
receptors which were known in the art at the time of the invention” inasmuch as “cells
corresponding to such subpopulations would have uncharacterized properties.”
Examiner’s Answer, page 4. While it is true that the specification does not discuss all
of the cell populations which can be selected by various combinations of the presence
or absence of CD34, CD38 and the IL-7 receptor, certainly a number of possibilities
are characterized. For example, according to the specification (page 11), “the absence
of expression of both IL-7R and IL-6R” on CD34+, CD38+ cells “appears useful in
identifying erythroid progenitors,” yet the examiner has not explained why one skilled in
the art would not be able to use such cells to reconstitute erythroid populations.
It is well settled that the examiner bears the initial burden of providing reasons
why a supporting disclosure does not enable a claim. In re Marzocchi, 439 F.2d 220,
223, 169 USPQ 367, 369 (CCPA 1971). We find that the examiner has not
established a reasonable basis for questioning the enablement of the claims on
appeal. Accordingly, the rejection of claims 1 through 3, 5 through 8, 10 and 11 under
the first paragraph of 35 U.S.C. § 112 is reversed.
Obviousness
Claims 1 through 3, 5 through 8 and 10 are directed to a method for identifying
or isolating one or more populations of human progenitor cells, “said populations
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