Appeal No. 1996-1090
Application No, 08/027,974
enabled to use the claimed fragment to make antibodies
reactive to CEA, one would not be enabled to use the
fragments to make antibodies which can more specifically
differentiate between CEAs and CEA-like peptides.
Examiner argues that more is required than mere
antigenicity7 - that Appellants must show that one would
be enabled to use the claimed fragment to make antibodies
which can more specifically differentiate between CEAs
and CEA-like peptides. We disagree.
First, absent evidence to the contrary, using the
claimed fragment to make antibodies reactive to CEA is a
specific, credible, and substantial utility on which
Appellants can rely for enablement. "The PTO must have
adequate support for its challenge to the credibility of
states that the lack of enablement resides in the
production of CEA specific [Examiner's emphasis]
antibodies to detect CEAs- that is to differentiate CEAs
from CEA-like peptides, not that Examiner questions the
ability of the CEA to be immunogenic (Appellants seem to
be arguing that if the peptides are immunogenic- that is
antibodies can be raised to them- then they are enabled,
which is simply inconsistent with the stated utility for
the peptides)." Examiner's Answer, pp. 3-4.
7 In the Examiner's Answer (p. 5), certain passages are
reproduced from the specification in order to show that
an ability to cross-react with a CEA family member does
not provide one an ability to measure tumor-specific CEA
levels. According to the Examiner
These passages clearly bolster Examiner's position that
antigenicity is insufficient for enablement and
contradict Appellants contention that antigenisity
[antigenicity, sic] is sufficient for enablement.
Examiner's Answer, p. 5.
5
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