Appeal No. 1997-3951 Application 08/238,987 As can be seen, composition claim 1 of the `638 patent requires the presence of “a cytokine selected from the group consisting of tumor necrosis factor and a cytokine eliciting expression of tumor necrosis factor,” while composition claim 1 on appeal in relevant part requires “a compound eliciting production of cytokine in the patient.” The examiner’s enablement rejection revolves around that portion of the claimed subject matter directed to “a compound eliciting production of cytokine in the patient.” The examiner’s reasoning in support of the rejection appears on pages 3 and 4 of the Examiner’s Answer as follows: The claims encompass any compound which elicits production of any cytokine. The scope of the claims is not commensurate with the evidence of enablement provided by the disclosure with regard to the extremely large number of compounds and cytokines broadly encompassed by the claims and the claims broadly encompass a significant number of inoperative species. The evidence of record is limited to a combination of TNF with a protein C blocking antibody or a combination of endotoxin with a protein C blocking antibody. There is no evidence of record in this application with respect to any other cytokines or any other compounds which broadly elicit production of any cytokine. In view of the diverse biological activities of the cytokines and the cytokine network there is a reasonable doubt that any compound which elicits production of any cytokine would be effective in tumor therapy as claimed. Thus, Applicants have not provided sufficient guidance to enable one of ordinary skill in the art to make and use the claimed composition in a manner reasonably correlated with the scope of the disclosure. The scope of the claims must bear a reasonable correlation with the scope of 4Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 NextLast modified: November 3, 2007