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 3Page: Previous 1 2 3 4 5 6 7 NextLast modified: November 3, 2007