Appeal No. 2001-2524 Page 6
Application No. 08/369,295
We find no analysis of the Wands factors by the examiner. Instead, we
find only the examiner’s unsupported conclusions as to why the specification
does not enable the claimed invention. According to the examiner (Answer,
page 6), “any peptides of five or more amino acids may prove to be antigenic
when conjugated to a carrier protein but whether such an antigen will or will not
be protective is not predictive from the fact that it is antigenic since such findings
are empirical … based on trial and experimentation….” In addition, with regard
to the carrier portion of the antigen conjugate, the examiner finds (Answer, page
8), “the specification does not provide sufficient guidance as to which natural
carriers would be effective in providing a conjugate that would be effectively
immunogenic and/or immunoprotective.” The examiner, however, failed to
provide a factual basis for his concerns. In the absence of a fact-based
statement of a rejection based upon the relevant legal standards, the examiner
has not sustained his initial burden of establishing a prima facie case of non-
enablement.
As set forth in In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238
(CCPA 1971), before issues related to the patentability of the claimed subject
matter can begin to be considered, the examiner must determine what is being
claimed.
[T]he claims must be analyzed first in order to
determine exactly what subject matter they
encompass….
The first inquiry therefore is merely to
determine whether the claims do, in fact, set out and
circumscribe a particular area with a reasonable
degree of precision and particularity. It is here where
the definiteness of the language employed must be
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007