Appeal No. 1999-1245
Application No. 08/245,282
kinase (PI3K). A preferred agent which inhibits PI3K activity in a T cell is the fungal
metabolite wortmannin. Other agents include the bioflavonoid, quercetin, and the
compound LY294002. Specification, page 6.
Alternatively, a T cell may be contacted both with an agent which inhibits PI3K
activity and with an agent which inhibits protein tyrosine kinase activity, such as
herbimycin A, or a derivative or analogue thereof. Id. The method of the invention is
applicable to the treatment of autoimmune disease and other disorders associated with
an abnormal immune response. Specification, page 7.
35 U.S.C. § 112, first paragraph
Claims 46-60, 85 and 86 stand rejected under 35 U.S.C. § 112, first paragraph
as unpatentable for lack of enablement as to how to make and use the claimed
invention. We note that the term “modulate” as it appears in the claims is interpreted
by the examiner to mean “inhibit”, in accordance with a restriction requirement and
subsequent election made on September 14, 1995 (Paper No. 6) and December 8,
1995 (Paper No. 8). Answer, pages 5-6. For the purposes of this appeal, we adhere
to the examiner's interpretation of the term ?modulate.”
In order to establish a prima facie case of non-enablement, the examiner must
provide a reasonable explanation as to why the scope of protection provided by a claim
is not adequately enabled by the disclosure. See In re Wright, 999 F.2d 1557,
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