Appeal No. 1999-1430
Application No. 08/441,893
group consisting of: (a) a DNA encoding a Type II IL-1R having an amino acid
sequence as set forth in SEQ ID NO.:2, having an amino terminus at amino acid
1, and a carboxy terminus selected from the group consisting of an amino acid
between amino acids 330 and 385, inclusive, of SEQ ID NO.:2.
The record is silent with regard to what effect if any the claims of the ‘683
patent would have with regard to the issue before us under 35 U.S.C. § 112, first
paragraph. It appears that the instant claims are drawn at least in part to the
receptor protein encoded by the DNA set forth in claim 1 of the ‘683 patent. To
that extent, the examiner’s instant rejection of the claims under 35 U.S.C. § 112,
first paragraph, appears to be inconsistent with the determination that claim 1 of
the ‘683 patent is patentable.
For the reasons set forth above, we vacate the examiner’s rejection of
claims 16 and 23-25 under 35 U.S.C. § 112, first paragraph. In the event of
continued prosecution, the examiner should take a step back and reevaluate
whether the information set forth in the specification in conjunction with the
relevant prior art, including the ‘683 patent, enables one to make and use the
claimed invention throughout it scope without undue experimentation. If the
examiner finds that a rejection is necessary, the examiner should issue an
appropriate Office action setting forth such a rejection, using the proper legal
standards and clearly setting for the facts relied upon in support of such a
rejection.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 CFR § 1.136(a).
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