Appeal No. 1995-1989
Application 07/850,142
against which to make monoclonal antibodies that would have all the properties
required or that would bind to the unidentified epitopes in order to practice the
invention as claimed [Answer, pp. 6-7].
We find these arguments unpersuasive.
With respect to the examiner’s various arguments concerning the identification of
other epitopes present on alpha-chain haptoglobin, properdin P, or other wise, we point
out that none of the claims requires the identification of an epitope. We acknowledge that
the claims require the use of monoclonal antibodies having specific binding properties, but
there is no limitation as to the epitope which is recognized by said monoclonals. Thus, we
do not find the examiner’s arguments that it would require undue experimentation to
identify (i) other epitopes present on alpha-chain haptoglobin and properdin P, or (ii) other
unidentified epitopes, to be tenable.
As to the examiner’s position that it has not been demonstrated that the appellants’
method for producing monoclonal antibodies is reproducible, we point out that it is well
established that “a specification disclosure which contains a teaching of the manner and
process of making and using the invention in terms which correspond in scope to those
used in describing and defining the subject matter sought to be patented must be taken
as in compliance with the enabling requirement of the first
paragraph of § 112 unless there is a reason to doubt the objective truth of the statements
contained therein which must be relied on for enabling support.” In re Marzocchi, 439
F.2d 220, 223, 169 USPQ 367, 369 (CCPA 1971). The examiner may reject the claims
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