Appeal No. 2001-2584 Page 3
Application No. 08/462,817
GROUNDS OF REJECTION
Claims 47-49, 52 and 56-64 stand rejected under 35 U.S.C. § 112, first
paragraph, as being based on an insufficient disclosure to support or enable the
scope of the claimed invention.
Claims 47, 48, 56-60, 63 and 64 stand rejected under 35 U.S.C. § 102(a)
as anticipated by Green.
Claims 49 and 613 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Green.
We vacate the rejections and remand this application to the examiner to
reevaluate the question of patentability using the proper legal standards.
DISCUSSION
THE REJECTION UNDER 35 U.S.C. § 112, FIRST PARAGRAPH:
According to the examiner (Answer, page 3), “the disclosure is enabling
only for claims limited to the production of a functional steroid hormone receptor
having of [sic] the amino acid sequence which is disclosed in the instant
specification….” In support of this position, the examiner finds (Answer, bridging
sentence, pages 3-4):
The specification does not provide an adequate written description
and an enabling disclosure for the construction and use of an
expression system encoding any and all proteins which might be
encompassed by the term “steroid receptor protein” or for any and
all members of a specific class (i.e.[,] estrogen) of steroid receptor
proteins.
3 It appears that the examiner made a typographical error by referencing (Answer, page 8) claim
61 as part of this rejection. Since this rejection is concerned with CV-7 cells, it appears that the
examiner intended to reject claim 60, which as discussed above adds, to claim 58, a further
limitation “wherein the host cells are CV-1 cells.” Claim 61 does not include a limitation drawn to
CV-1 cells. Therefore, this typographical error was corrected herein.
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