Appeal No. 95-1231
Application No. 07/689,215
The rejection under 35 U.S.C. § 112, first paragraph
Claims 14-15 stand rejected under 35 U.S.C. § 112, first paragraph, as being
based on a non-enabling disclosure.
In the paragraph bridging page 3 and 4 of the Examiner's Answer (Answer), the
examiner indicates the basis of the rejection:
As recited, the claim requires contact of the product with human
serum, and then separate contact of human serum with the
immobilized antibody preparation . . . . the claim still does not clearly
recite that the product is combined with human serum, and that two
aliquots of this combined mixture are individually tested for binding
to C1r and production of activation product C4a. Without such a
combination, the assay cannot produce any meaningful result.
At page 7 of the Answer, the examiner concludes:
Therefore, one of ordinary skill would have understood that "separately
contacting the human serum with immobilized antibody preparation..." to
mean the human serum control, and not human serum after contact with the
product as alleged. In the absence of an explicit recitation of the contact of
the product, human serum, and immobilized antibodies, the instant assay
cannot function as intended.
It is axiomatic that, in proceedings before the PTO, claims in an application are to
be given their broadest reasonable interpretation consistent with the specification and that
claim language should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art. In re Sneed, 710 F.2d 1544, 1548, 218 USPQ 385, 388
(CAFC 1983). We do not agree that the examiner's interpretation of the claims is
reasonable in light of the specification and as one of ordinary skill would read the noted
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