Appeal No. 1996-1090
Application No, 08/027,974
directed to both the entire peptide and a fragment
thereof, involves the claimed fragment only.
One with skill in the art can "make" the claimed
invention without undue experimentation.3
Consequently, the focus of attention is on how to
"use" the claimed invention only.
Accordingly, the issue is whether the specification
enables a person skilled in the art to use the claimed
fragment.
There are two uses disclosed in the specification.
First, on page 24 and in the claim, Appellants describe
immunological cross-reactivity with a CEA family
polypeptide. There is no dispute that "Appellants have
disclosed the full-length sequences and also taught those
skilled in the art that fragments exhibiting
immunological cross-reactivity with a CEA family member
will be useful." Brief, p. 12. Second, on page 3,
Appellants describe immunoassays which can distinguish
between CEA and CEA-like antigens.
Regarding the first use, appellants assert that "the
determination of which fragments exhibit cross-reactivity
3 "Declarant states that with regard to (1), ? obtaining
the polypeptide fragments does not present undue obstacle
and is within the skill of the ordinary practitioner in
the art.? The Examiner agrees with this statement since
this aspect was not the basis for the rejection."
Advisory Action, p. 2.
3
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