Appeal No. 2001-0889 Page 4
Application No. 08/459,086
rejected all of the claims as nonenabled and rejected some of the claims as
anticipated.
1. Enablement
The examiner rejected the claims on the basis that the specification “is
enabling only for claims limited [to] antibodies which specifically bind disclosed
epitopes and have been shown to be antigenic or where specific guidance has
been provided to show that alterations of the epitope would be antigenic given
the changes claimed.” Examiner’s Answer, page 4. The examiner’s principal
concern seems to be that the redundant peptide sequence recited in the claims
includes what she characterizes as “non-conservative substitutions.” See the
Examiner’s Answer, pages 5-6:
[T]he specification must provide some guidance as to how to make
peptides which will be recognized as foreign and will generate
antibodies given the proposed changes to an epitope. As the
claims embrace discrete non-conservative substitutions, it is not
reasonable to expect the epitope to evidence the same activity for
the generation of antibodies. The use of non-conservative
substitutions would very likely abolish activity of the peptide to
generate antibodies to this location and would be expected to not
conserve the activity of the original sequence.
The examiner concludes that “[i]t would therefore require undue experimentation
to obtain antibodies to epitopes, which are significantly dissimilar, from the
naturally occurring peptide which has be[en] shown to generate antibodies.”
Examiner’s Answer, page 7.
Appellant argues that “given the teachings of the Specification, the
experimentation required by one skilled in the art to identify functional antibodies
would not be undue, but rather would merely encompass routine screening.”
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