Appeal No. 2006-0148 Page 5
Application No. 09/933,309
Thus, the specification makes clear that an “immunological equivalent” of a
transplanted organ or tissue is a donor-specific cell or antigen that stimulates deletion or
anergy of the immune system cells that would otherwise cause rejection of the
transplanted organ or tissue. The specification states that one example of an
immunological equivalent is “bone marrow cells.” In our view, “the claims, read in light
of the specification, reasonably apprise those skilled in the art and are as precise as the
subject matter permits,” Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367,
1385, 231 USPQ 81, 94-95 (Fed. Cir. 1987), and therefore comply with the second
paragraph of 35 U.S.C. § 112.
3. Enablement
The examiner rejected claims 16-22 and 32-34 under 35 U.S.C. § 112, first
paragraph, on the basis that the claimed method is not enabled by the specification’s
disclosure. The examiner reviewed several of the references submitted by Appellant to
show thymic regeneration and lack of rejection following intrathymic injection of antigen
(Examiner’s Answer, pages 5-6) and concluded that, “[w]hile the literature submitted by
Appellant teaches regeneration of age-involuted thymus, the experiments were only
executed in rats, there was no significant improvement of cellular immune function and
there were harmful side effects (reduced testosterone concentrations, hepatic tumors).”
Id., page 7.
The examiner also faulted the level of disclosure in the specification, arguing
that:
• “[t]he specification does not provide guidelines to determine thymic atrophy or
involution” (Examiner’s Answer, page 7);
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