Appeal No. 1997-2319
Application No. 08/147,707
Claims 1 through 3, 5 through 8, 10 and 11 stand rejected under the first
paragraph of 35 U.S.C. § 112, as based on a non-enabling disclosure. In addition,
claims 1 through 3, 5 through 8, 10 and 11 stand rejected under 35 U.S.C. § 103 as
unpatentable over Terstappen, McClanahan and Armitage. On consideration of the
record, we reverse the rejection under 35 U.S.C. § 112, first paragraph, as well as the
rejection under 35 U.S.C. § 103. However, we raise an additional issue for
consideration upon return of the application to the examining group.
PROCEDURAL MATTERS
Initially, we note that appellants originally elected a particular species of the
genus “cell adhesion molecules and/or growth factor receptors” in response to a
requirement under 35 U.S.C. § 121 (paper no. 6). Thus, according to the examiner,
“[t]he appealed claims have been examined with respect to the elected species, ‘IL-
7R’.” Examiner’s Answer, page 2. That is, the claims have been examined as though
each requires a marker for the IL-7 receptor. Accordingly, we review the examiner’s
rejection and appellants’ response with this in mind.
DISCUSSION
Enablement
All of the claims on appeal stand rejected under 35 U.S.C. § 112, first paragraph
as unenabled throughout their scope. The examiner’s concerns are three-fold.
The examiner acknowledges that the specification is enabling for “making”
(which we take to mean identifying and/or isolating) cells positive for CD34, CD38 and
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