Appeal No. 2000-1929
Application No. 08/019,297
are directed to antibodies directed against any one of the p15, p25, p36, p42, or
p80 proteins of HIV (claims 45-48) and to a method of preparing such antibodies
(claim 36).
The examiner rejected these claims as being broader than the enabling
scope of the disclosure, noting that the “specification is virtually in its entirety
devoted to the identification and isolation of the HIV virus and assays for p25
core protein. . . . The only discussion of antibodies and assays in the
specification is directed to p25 protein (see page 21, lines 32-39). No reference
is made to the production or utilization of the p15, p36, p42 and p80 antigens of
HIV-1.” Examiner’s Answer, page 6. The examiner also cites Seaver as
teaching that only a small percentage of monoclonal antibodies for a given
antigen are useful in a diagnostic kit.
The first paragraph of 35 U.S.C. § 112 requires a patent specification to
“contain a written description of the invention, and of the manner and process of
making and using it, in such full, clear, concise, and exact terms as to enable any
person skilled in the art to which it pertains . . . to make and use the same.”
“Although the statute does not say so, enablement requires that the specification
teach those in the art to make and use the invention without ‘undue
experimentation.’” In re Vaeck, 947 F.2d 488, 495, 20 USPQ2d 1438, 1444
(Fed. Cir. 1991). “Tossing out the mere germ of an idea does not constitute
enabling disclosure. While every aspect of a generic claim certainly need not
allowed. See the Examiner’s Answer, page 3.
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