Appeal No. 2001-2584 Page 7
Application No. 08/462,817
defined by nucleotide sequence, falling within the scope of
the genus or of a recitation of structural features common to
the members of the genus, which features constitute a
substantial portion of the genus.
See also Reply Brief, page 7. By failing to apply the correct legal standards for
the issue of enablement and written description the examiner failed to
adequately develop the record with regard to either provision of 35 U.S.C. § 112,
first paragraph. Most significantly, the examiner failed to clearly explain why the
sequence information, provided in appellants’ specification, for several members
of the steroid/thyroid receptor superfamily, coupled with the description of the
characterizing structural features common to receptors in this superfamily is not
sufficient to enable, or provide written descriptive support, for the entire receptor
superfamily. Accordingly, we vacate the rejection under 35 U.S.C. § 112, first
paragraph and remand the application to the examiner for further consideration.
If after review of the specification, prosecution history, and relevant prior
art, the examiner believes that a rejection is necessary, the examiner should
issue an appropriate Office Action setting forth such a rejection, using the proper
legal standards, and clearly setting forth the facts relied upon in support of such
a rejection. Any further communication from the examiner that contains a
rejection of the claims should provide appellants with a full and fair opportunity to
respond.
THE REJECTION UNDER 35 U.S.C. § 102(a):
The examiner finds (Answer, page 8) Green, at figure 5 on page 138,
describes “a system, cell and method which expressly met all of the limitations of
the instant claims prior to the making of the instant invention.”
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