Appeal No. 1999-1162
Application No. 08/427,837
for the phrase “no short term immunopathological effects.” Read in this manner, the term
“non-immunopotentiating” appears to restate a specific phrase finding support in the
original disclosure. Thus, we do not find the term “immunopotentiating” to introduce new
matter into the specification and claims. The specification and claims appear to convey to
those skilled in the art, that, as of the filing date the appellants were in possession of the
invention. Therefore, the rejection of claims 9, 19 and 20 under 35 U.S.C. § 112, first
paragraph is reversed.
OTHER MATTERS
Having affirmed the rejection of claim 9 under 35 U.S.C. § 102(b) and reversed the
rejections of claims 9, 19 and 20 under 35 U.S.C. § 102(e) and 35 U.S.C. § 112, first
paragraph, claims 19 and 20 are free of prior art and not subject to rejection.
With regard to claims 19 and 20, we recognize that Wathen describes in Example
9, column 19, lines 35-56, that aluminum phosphate may be used as an adjuvant or
immunomodulating agent for a PIV3 vaccine. While we could evaluate claims 19 and 20
under 35 U.S.C. § 103 in relation to the combination of Ray and Wathen, we choose not to
do so. This Board serves as a board of review. 35 U.S.C.
§ 6(b). It is the responsibility of the Examiner, not the Board to set forth the ground for a
rejection in the first instance. See Ex Parte Braeken, 54 USPQ2d 1110, 1112 (Bd. Pat.
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