Appeal No. 1998-1987
Application No. 07/915,783
In re Berg, 140 F.3d 1428, 1431, 46 USPQ2d 1226, 1229 (Fed. Cir. 1998)
(citation omitted). “Without a patentable distinction—because the pending claim
defines merely an obvious variation of the patented claim—the patentee may
overcome the double patenting rejection by filing a terminal disclaimer.” In re
Goodman, 11 F.3d 1046, 1052, 29 USPQ2d 2010, 2016 (Fed. Cir. 1993).
“[W]ithout a terminal disclaimer, the [previously issued] species claims preclude
issuance of the generic application.” Id.
The examiner rejected all of the claims on appeal as unpatentable over
claims 1-15 of Appellant’s U.S. Patent 4,859,464. The claims of the ‘464 patent
are directed to, inter alia, compositions comprising plasmodial antigens derived
by solubilization with the non-ionic detergent n-octyl-β-D-glucopyranoside. The
‘464 patent claims are therefore a species of the instantly claimed genus (which
encompasses compositions derived by solubilization with any non-ionic
detergent).
Appellant has not disputed the merits of this rejection and has agreed to
file a terminal disclaimer to overcome it. See Paper No. 33, filed August 30,
1994, page 10; Appeal Brief, page 41. Since Appellant has not argued that the
rejection is improper, we affirm it.
2. The “lack of utility” enablement rejection.
The examiner rejected claims 11-16, 18, 27, 29, and 68-80 under 35
U.S.C. § 112, first paragraph, as nonenabled. The basis of the examiner’s
rejection is that the claimed compositions had not been shown to be
therapeutically effective as of the effective filing date of the instant application.
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