Appeal No. 2001-0121 Page 3
Application No. 08/212,185
GROUNDS OF REJECTION
Claims 96-103 stand rejected under 35 U.S.C. § 112, first paragraph, as
being based on an insufficient disclosure to support or enable the full scope of
the claimed invention.
Claim 100 stands rejected under 35 U.S.C. § 102(a) as anticipated by
Decker.
Claims 97-102 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Fu.
For the reasons that follow, we reverse the rejections under 35 U.S.C.
§ 112, first paragraph and § 103. We vacate the rejection under 35 U.S.C.
§ 102(a) and remand the application to the examiner to consider the following
issues and to take appropriate action
DISCUSSION
THE REJECTION UNDER 35 U.S.C. § 112, FIRST PARAGRAPH:
According to the examiner (Answer, page 3), “the specification, while
being enabling for detection of receptor recognition factors having molecular
weights of 113 kD, 91 kD or 84 kD, as described in the specification, does not
reasonably provide enablement for the scope of the claims, which encompass
detection of any and all possible ‘receptor recognition factor(s)’.”
In support of her position, the examiner makes the following observations
(Answer, page 4), the claimed methods:
require[] that the person of ordinary skill in the art have knowledge
of (1) the protein being detected such that the protein can be
distinguished from all other proteins, (2) the identity of the DNA
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