Appeal No. 1995-2785
Application No. 07/576,423
DISCUSSION
On consideration of the record, we shall not sustain the
examiner's rejections under 35 U.S.C. § 112, first and second
paragraphs.
Claims 17 through 19, 21 through 23, 26, and 30 stand
rejected under 35 U.S.C. § 112, first paragraph, as based on a
specification which does not adequately teach how to make or
how to use the claimed invention. In view of its brevity, we
here reproduce the entire statement of rejection from the
Examiner's Answer (Paper No. 24), paragraph bridging pages 3
and 4:
Enablement is not commensurate in scope with
any $14, $18, or $22-nucleotide long region of the
DNA sequence of Figure 2 as claimed in claims 17, 18
and 19, respectively. The specification as filed
teaches how to use such fragments in those cases
where the fragments encode epitopic portions of
protein. However, the scope of the claims is such
as to include all possible DNA fragments from either
the coding or the non-coding strands of the
molecule, which fragments exceed a minimum stated
length. The current specification as filed does not
teach how to make and use all such possible
fragments. Specifically, only a limited number of
such fragments will encode epitopic regions of the
Ro antigen, and applicants have failed to present
teachings commensurate in scope with claims to
nucleic acids which do not encode epitopic regions.
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