Appeal No. 94-1911
Application 07/662,735
disclosed in the . . . application, namely, that non-adaptive
proteins, here the PCB degrading enzymes, can be expressed by
exogenous DNA in a mixed microbiologically competitive
environment in the presence of a selective substrate, here
detergent” (p. 11, final para.) As stated by the examiner, the
Second Declaration of Curtis A. Lajoie, Ph.D., filed June 4, 1993
(Attachment to Paper No. 19), and appellants' arguments and
supporting extrinsic evidence (Paper No. 20, including Exhibits
A, B, and C) “overcome the examiner’s assertion that the
invention is inoperative and therefore lacks utility”
(Supplemental Examiner’s Answer, p. 1 (Paper No. 21)).
The examiner was willing to conclude on the basis of the
limited showing in the specification that the claimed invention
possessed utility under 35 U.S.C. § 101, presumably throughout
its scope. See In re Langer, 503 F.2d 1380, 1391-92, 183 USPQ
288, 297 (CCPA 1974). Thus, it is not clear why that
determination does not also extend to the Section 112 rejection.
Therefore, what remains of the examiner’s rejection under
Section 112 is the merits of the examiner’s argument that a
specification which contains a statement of the claimed
invention, a limited number of prior art citations which reflect
the knowledge and skill in the art, and a limited number of
- 9 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007