Appeal No. 94-3676
Application 07/949,327
the subject matter claimed in this case complies with the
description and enablement requirements of
35 U.S.C. § 112, first paragraph, for all other DNA
encompassed by the claims. For the most part, we leave the
question of whether the present claims satisfy the
requirements of the first paragraph of section 112 for the
examiner to determine in the first instance. See In re Deuel,
supra, and Regents of the Univ. Of California v. Eli Lilly &
Co., supra, for instruction. Moreover, we remind the examiner
that if Higashi, Leung, and Capon are material prior art with
respect to the claimed subject matter, new grounds of
rejection under 35 U.S.C. § 102 or 103 may very well be
appropriate.
4. Conclusion
We reverse the examiner’s decision to reject Claims 12-
17, 24-28, and 32 under 35 U.S.C. § 103 as unpatentable in
view of the combined teachings of Yabrov and Goeddel.
We reverse the examiner’s decision to reject Claims 12-
22, 24-28, 32, and 35 under 35 U.S.C. § 103 as unpatentable in
view of the combined teachings of Yabrov, Goeddel, and Nagata.
We reverse the examiner’s decision to reject Claims 12-
22, 24-28, 32, and 35 under 35 U.S.C. § 103 as unpatentable in
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