Appeal 2007-1152
Application 10/660,924
The Examiner has provided no other explanation as to why the claim
is not adequately enabled for the claimed method of preventing onset of
Type I diabetes. Thus, on the record before us, we conclude that the
Examiner has not sustained the burden of establishing a reasonable basis to
question the scope of enablement of the claimed invention. We reverse the
rejection of claims 2-9 for lack of enablement
Written description rejection
Under 35 U.S.C. § 112, first paragraph, the specification must contain
a written description of the invention. Thus, when claims are amended
during patent prosecution, the claimed invention, in its amended form, must
be described in the specification. “An applicant complies with the written
description requirement ‘by describing the invention, with all its claimed
limitations.’ Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572, 41
USPQ2d 1961, 1966 (1997).” Gentry Gallery v. The Berkline Corp., 134
F.3d 1473, 1479, 45 USPQ2d 1498, 1502-1503 (Fed. Cir. 1998).
The Examiner contends that claims 2-9, which were added by an
amendment dated April 1, 2004, are not described in the Specification as it
was originally filed (Answer 8). The Examiner argues that the Specification
“as originally filed only disclosed [a] two-step process” involving tolerizing
and curative doses (Answer 12), not a one-step method of “preventing type I
diabetes comprising … implanting a tolerizing dose of insulin-secreting
cells” in which the dose is at least one order of magnitude less than a
curative dose (Answer 12). We do not agree.
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