Appeal No. 1998-1283
Application No. 08/449,731
That appellants have not established an absolute correlation to the presence of the complete
protein or absence of the complete protein and the development of cancer is not
determinative as to whether one could practice the presently claimed invention without undue
experimentation. Therefore, the rejection of claims 19, 20, 52, 53, and 64 under 35 U.S.C. §
112, first paragraph, is reversed.
The double patenting rejections
Claim 64 stands rejected under 35 U.S.C. § 101 and claims 19, 20, 52, and 53 stand
rejected under the judicially created doctrine of obviousness-type double patenting over
claims 64 and 65 of Application No. 08/450,582, now U.S. Patent 6,114,124. At the oral
hearing held March 8, 2001 appellants’ representative indicated that both claims 64 and 65
were canceled in Application No. 08/450,582 prior to issuance of that application. Since the
examiner only references claim 64 and 65 of that application and since we do not have the
prosecution history from that application available for consideration, we can not readily
determine whether the issue of double patenting or obviousness-type double patenting is still
relevant to the claims presently on appeal. However the statement of the rejection by the
examiner would suggest that the basis of this rejection at the time of this appeal, has changed
in a manner which precludes meaningful review. Therefore, we dismiss both the rejection of
claim 64 under 35 U.S.C. § 101 and the rejection of claims 19, 20, 52, and 53 under the
judicially created doctrine of obviousness-type double patenting. Should further prosecution
occur in this application we would urge the examiner to consider anew the claims of the
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