Appeal No. 1996-1090
Application No, 08/027,974
exhibiting immunological cross-reactivity with a CEA
family member and having no less than five amino
acids, and said recombinant cloning vehicle coding
for a CEA family polypeptide selected from the group
consisting of sequences TM-2, TM-3 KGCEA1 and
KGCEA2, or a synthetic peptide corresponding to said
expression product, or a labeled form thereof.
The sole rejection is:
Claim 19 is rejected under 35 U.S.C. ? 112, first
paragraph, for failing to provide an enabling disclosure.
Decision
Examiner has rejected claim 19 for failing to comply
with the enablement requirement of 35 U.S.C. ? 112, first
paragraph:
The specification shall contain a written
description of ... the manner and process of making
and using [the claimed invention] in such full,
clear, concise, and exact terms as to enable any
person skilled in the art to which [the invention]
pertains, or with which it is most nearly connected,
to make and use [that invention].
The issue for our determination is significantly
narrowed as a result of concessions made by the Examiner.
According to the examiner:
The entire peptide is enabled.2 Consequently, the
enablement issue surrounding claim 19, which is
2 "Examiner respectfully reminds the board that the
Examiner has indicated that the entire length peptides
have been indicated as allowable. The novelty [, sic]
obviousness and enablement of those proteins is [are,
sic] not an issues [issue, sic] instantly. The sole
issue remaining is the enablement of the peptide
fragments of those proteins." Examiner's Answer, p. 2.
2
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