Appeal No. 1997-1817
Application No. 08/139,693
reply brief (Paper No. 17, entered July 18, 1996) for the appellants' arguments
thereagainst.
OPINION
1. Rejection of claims 1-16 under § 112, ¶1 as based on a nonenabling specification
According to the examiner, the specification only enables "specific 'Trigger
Factors'" because, while the specification recites two specific "Trigger Factors," that
"recitation fails to establish a genus of 'Trigger Factor'(s) thereby placing this genus in
the skilled Artisan's possession" (answer, p. 3).2 The examiner bases his opinion on
the unpredictability of the pharmaceutical art and the failure of the specification to
identify the compound class(es) which possesses the required "trigger factor" activity
(answer, p. 11).
Here, as pointed out by appellants, the specification provides both a specific
definition of "trigger factor" and examples thereof, i.e., TNF and anti-Fas antibody (see
e.g., brief, p. 9; reply brief, p. 5; specification, p. 4, ll. 14-19 and p. 17, ll. 3-16).
Moreover, the prior art suggests that other "trigger factors" are known. For example,
Forsdyke discusses activation of HIV-bearing T-cells as part of a polyclonal
homeostatic response to "a lectin-like factor (lymphokine, growth factor)" (p. 26, col. 1,
2The examiner cited "MPEP §§ 706.03(n) and 706.03(z)" (answer, p. 3). These sections are
entitled "Correspondence of Claim and Disclosure" and "Undue Breadth," respectively, and last appeared
in the Sixth Edition of the MPEP (Jan. 1990). See Rev. 1 of the Sixth Edition of the MPEP (Sept. 1995).
We observe that both of these sections remained unchanged since at least Rev. 6 of the Fifth Edition of
the MPEP (Oct. 1987). Neither section refers to 35 U.S.C. § 112, first paragraph, in whole or by
requirement, and thus we will not further refer in this decision to either of these MPEP sections.
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