Appeal No. 2000-1929
Application No. 08/019,297
purification only by first disassociating the antigen and antibody components of
the complex. The instant claims, however, are not directed to an isolated
antibody or an isolated antigen, the claims are directed to an “immunological
complex.” The issue, therefore, is whether the specification discloses a
patentable utility for an immunological complex as a complex. We agree with the
examiner that it does not.
The specification discloses no utility for the claimed immune complexes as
complexes. Therefore, we affirm the rejection of claims 28-30, 35, and 42 under
35 U.S.C. § 101 for lack of utility. We also affirm the rejection of these claims
under 35 U.S.C. § 112, first paragraph. See Ziegler, 992 F.2d at 1200-01, 26
USPQ2d at 1603 (“If the application fails as a matter of fact to satisfy 35 U.S.C.
§ 101, then the application also fails as a matter of law to enable one of ordinary
skill in the art to use the invention under 35 U.S.C. § 112.”).
2. The enablement rejection
The examiner rejected all of the claims under 35 U.S.C. § 112, first
paragraph, on the basis that the specification provides inadequate guidance to
enable those skilled in the art to make and use the claimed immune complexes
and antibodies to HIV proteins other than p25.2 As discussed above, the
specification fails to teach how to use the immune complexes of claims 28-30,
35, and 42, and therefore we have affirmed the rejection of these claims under
35 U.S.C. § 112, first paragraph, for lack of enablement. Claims 36 and 45-48
2 As noted above, claims 43 and 44 (which are limited to antibodies specific to p25) have been
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