Ex parte CHOUDHURY - Page 3




              Appeal No. 1996-3170                                                                                         
              Application No. 08/180,371                                                                                   


              required by § 112, first paragraph."  (Answer, page 3).  The first paragraph of 35 U.S.C. §                  

              112 requires that the specification contain a written description of the claimed invention                   
              and the manner and process of making and using that invention in such full, clear, concise,                  
              and exact terms as to enable any person skilled in the art to which that invention pertains to               
              make and use that invention.  In re Wright, 999 F.2d 1557, 1561, 27 USPQ2d 1510, 1513                        
              (Fed. Cir. 1993).                                                                                            
                     On this record, the examiner has acknowledged that the disclosure in support of the                   
              presently claimed invention is sufficient to meet the "written description", "how to make",                  
              and "best mode"  requirements of 35 U.S.C. § 112, first paragraph.  (Answer, page 8).  In                    
              addition, the examiner does not dispute that "a protein having CSF activity would indeed                     
              be 'useful'." (Id.)                                                                                          
                     In explaining the basis for this rejection, the examiner states (Answer, page 3-4):                   
                     The specification provides confusing and conflicting teachings about "TC-                             
                     CSFs" generally, and the structural relationship of the peptide fragment now                          
                     claimed to the various other species disclosed is so insubstantial that no                            
                     conclusions regarding its functional properties may properly be drawn from                            
                     comparisons with other "TC-CSFs".                                                                     
              The examiner concludes (Answer, page 7):                                                                     
                     In summary, the data presented in the disclosure are not credible, and the                            
                     attempts to reconcile fundamental differences between conflicting results are                         
                     not logically consistent.  In view of the evident lack of any evolutionary                            
                     relationship between the human "TC-CSF" and the other proteins                                        
                     characterized in the specification and the confusing teachings relative to the                        
                     claimed peptide per se, it cannot reasonably be predicted that the "TC-CSF                            

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