Appeal No. 1996-1002
Application 07/988,945
humanized antibodies are known in the art. In addition, we note page 2 of the
specification which explicitly defines this terminology. Thus, we do not agree that the
claim is rendered indefinite by the use of this terminology. Therefore, we reverse the
rejection of claim 27 under 35 U.S.C. § 112, second paragraph.
At page 14 of the Answer, the examiner appears to indicate that the real concern
addressed by this rejection is that claim 26 claims a "humanized" antibody and
therefore, it is not clear how the antibody of claim 27 is different from the antibody of
claim 26. Should further prosecution occur, we would encourage the examiner to
review both claims 26 and 27 and determine whether claim 27 fails to further limit claim
26, on which it depends. Should the examiner determine that claim 27 is improperly
dependent, the examiner should take whatever action is appropriate. (See 35 U.S.C.
§ 112, fourth paragraph; 37 CFR 1.75(c); MPEP § 608.01(n), 6th ed. Rev. 3, 1997;
Ex parte Porter, 25 USPQ2d 1144, 1147 (Bd. Pat. App. & Int. 1992)).
The rejection under 35 U.S.C. § 112, first paragraph
Claims 18-22 and 25-27 stand rejected under 35 U.S.C. § 112, first paragraph,
as being based on a non-enabling disclosure. The issue, as framed by the examiner, is
whether the specification describes how to use the claimed composition either in vivo or
in vitro. (Answer, page 4). We are mindful that the Patent and Trademark Office (PTO)
bears the initial burden of providing reasons for doubting the objective truth of the
statements made by the applicants as to the scope of enablement. Only when the PTO
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