Appeal No. 1997-2393
Application No. 08/183,381
We reverse.
DISCUSSION
In reaching our decision in this appeal, we have given consideration to the
appellants’ specification and claims, and to the respective positions articulated by
the appellants and the examiner. We make reference to the examiner’s Answer6 for
the examiner’s reasoning in support of the rejections. We further reference
appellants’ Brief7 for the appellants’ arguments in favor of patentability.
THE REJECTION UNDER 35 U.S.C. § 112, FIRST PARAGRAPH:
According to the examiner (Answer, page 7) “[a]pplicant [sic] broadly claims
[sic] an anti-idiotype vaccine to prevent cancer, AIDS and malaria, but the
specification fails to enable the vaccine(s) and effectively teach how to make and/or
use said vaccines to achieve this.” We note that while the examiner’s rejection is
centered on AIDS, malaria and cancer, none of appellants’ generic claims 22 and
24-28 are so limited. In fact, the examiner withdrew her rejection under 35 U.S.C. §
112, first paragraph with regard to claims containing limitations to AIDS, malaria
and cancer. See Answer, page 2.
In response to the examiner’s rejection appellants submit a number of pre-
filing date references (Brief, pages 9-12, Exhibits 2-13) illustrating the state of the
art with respect to anti-idiotype vaccines developed against infectious organisms
and tumors. See e.g. Thanavala (Exhibit 12, page 64) “anti-idiotype antisera
6 Paper No. 27, mailed July 10, 1996.
7 Paper No. 26, received March 5, 1996.
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