Appeal No. 2001-2524 Page 7
Application No. 08/369,295
analyzed – not in a vacuum, but always in light of the
teachings of the prior art and of the particular
application disclosure as it would be interpreted by
one possessing the ordinary level of skill in the
pertinent art.
See also In re Geerdes, 491 F.2d 1260, 1262, 180 USPQ 789, 791
(CCPA 1974) (“Before considering the rejections under 35 U.S.C. § … 112, we
must first decide … [what] the claims include within their scope.”). Appellant’s
claims require that the antigen conjugate elicit a protective immune response to
streptococcal infection in a mammal when administered mucosally. As the
examiner recognizes (Paper No. 38, page 3) appellant’s specification exemplifies
the carrier cholera toxin B (CTB). The specification also discloses (page 25),
“[t]hose skilled in the art will recognize that other carriers can be employed …
[including] the E. coli labile toxin B subunit or the pili from E. coli cells identified
as K99 pili and 987 pili….”
While the examiner may be concerned that the claims include inoperative
embodiments, as set forth in Atlas Powder Co. v. E.I. DuPont De Nemours &
Co., 750 F.2d 1569, 1576-77, 224 USPQ 409, 414 (Fed. Cir. 1984):
Even if some of the claimed combinations were inoperative,
the claims are not necessarily invalid. “It is not a function of
the claims to specifically exclude ... possible inoperative
substances....” In re Dinh-Nguyen, 492 F.2d 856, 859-59,
181 USPQ 46, 48 (CCPA 1974)(emphasis omitted). Accord,
In re Geerdes, 491 F.2d 1260, 1265, 180 USPQ 789, 793
(CCPA 1974); In re Anderson, 471 F.2d 1237, 1242, 176
USPQ 331, 334-35 (CCPA 1971). Of course, if the number
of inoperative combinations becomes significant, and in
effect forces one of ordinary skill in the art to experiment
unduly in order to practice the claimed invention, the claims
might indeed be invalid. See e.g., In re Cook, 439 F.2d 730,
735, 169 USPQ 298, 302 (CCPA 1971).
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