Appeal No. 1995-1162
Application 07/725,943
The claims stand rejected as follows:
I. Claims 1 through 12, 15, 18, 19 and 21 through 35 stand rejected under 35
U.S.C. § 112, first paragraph as being enabled “only for claims limited to the expression
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of alpha-glucosidase in E. coli utilizing a lac inducible promoter and a lacI gene.”
Answer, p. 3.
II. Claim 35 stands rejected under 35 U.S.C. § 112, first and second
paragraphs, as the claimed invention is not described in such full, clear, concise and exact
terms as to enable one skilled in the art to make and use the same, and/or for failing to
particularly point out and distinctly claim the subject matter of the invention.
III. Claims 1 through 12, 15, 18, 19 and 21 through 35 stand rejected under 35
U.S.C. § 103 as being unpatentable over Luck or Bagdasarian in view of Winnacker.
We reverse.
§ 112 First and Second Paragraph Issues
In the case before us, the examiner first contends that “[t]he specification does not
contemplate nor accommodate any and all proteins expressed by a transformed E. coli.”
Answer, p. 4. The examiner then proceeds to make a series of statements about inducible
promoters and protein expression, folding and size. Presumably, these statements form
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