Appeal No. 1999-0197
Application 08/054,970
Absent a fact-based explanation from the examiner why the experimentation
required to practice the methods set forth in the use claims on appeal would be undue
rather than routine, we conclude that the examiner has not established a prima facie case
of lack of enablement.
The examiner’s rejection is reversed.
Other Issues
1. p75-TNF-R.
As explained above, the present invention involves two distinct tumor necrosis
factor receptors, i.e., p55–TNF-R and p75-TNF-R. The vast majority of the disclosure in
this application is directed to the p55 receptor. The most illuminating discussion of the
p75 receptor in the specification appears at page 29 where appellants state:
Although reference is made throughout to the p55-TNF-R, it is evident from
what is known of the p75-TNF-R, that it functions similarly. Therefore the
present invention encompasses modulation of the signal transduction and/or
cleavage in both known TNF receptors.
Some of the claims on appeal contain an embodiment directed to the p75-TNF-R. For
example, claim 34 first references a molecule which binds to the portion of TNF-R which
includes certain amino acids of human p55-TNF-R or “the corresponding amino acids of
the human p75-TNF-R.” It does not appear from the record that the examiner has paid
attention to this alternative embodiment.
Upon return of the application, the examiner should review all of the claims pending
and ensure that the subject matter of each claim has been fully examined. For example,
10
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007