Appeal No. 96-2137
Application 07/668,920
If the examiner determines that any claim presented in response to the new
ground of rejection is not enabled by the original disclosure of this application, we urge
the examiner to consider the issue of enablement in light of the factors enumerated
above and structure any further rejection so that specific findings are made as to the
factors which are relevant under the facts of this case.
As we understand appellants’ position regarding the current claims on appeal,
appellants believe these claims are enabled when one considers the screening method
set forth in Example 2 of the specification including the data set forth in Table 1,
prophetic Example 3 and the disclosure of the Epstein reference. Apart from the
problems outlined above regarding how the data set forth in Table 1 should be
interpreted, we note that the specification does not describe with any specificity how
each of the monoclonal antibodies listed in Table 1 were made. Significantly missing
from the disclosure of this application is any mention or disclosure of the antigen used
as the immunogen in the preparation of the hybridomas which produce those
monoclonal antibodies. Furthermore, appellants have not described in the specification
how the negative control values in Table 1 were obtained nor explained their
significance in interpreting the data in Table 1.
As to appellants reliance upon Epstein to establish that the claimed invention is
enabled, we point out that Epstein was published after the effective filing date of the
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