Appeal No. 95-5069
Application No. 08/202,055
DISCUSSION
Claims 1, 4, and 5 stand rejected under 35 U.S.C. § 112,
first paragraph, as based on a non-enabling disclosure. This
rejection amounts to a requirement that the claims be limited
to a method for modifying the carbohydrate moiety on CD2
glyco-proteins rather than "glycoproteins" generically.
According to the examiner, any person skilled in the art to
which the invention pertains "would not know how to use the
claimed system for any glycoprotein other than CD2." See the
Examiner's Answer, page 4, first full paragraph.
In support of that position, the examiner expresses a
belief that some glycoproteins encompassed by claims 1, 4, and
5 (other than CD2 glycoproteins) may not work. Again, see the
Examiner's Answer, page 4, first full paragraph, including the
examiner's reliance on Peyrieras, Platt, and Romero. We
disagree with this line of reasoning.
That some glycoproteins encompassed by the appealed
claims may not work is not sufficient reason to enter a
rejection based on the enablement requirement of 35 U.S.C.
§ 112, first paragraph. As stated in Atlas Powder Co. v. E.I.
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