Appeal No. 1999-1355 Page 3
Application No. 08/469,786
Claims 35-47 stand rejected under the first paragraph of 35 U.S.C. § 112 as not
enabled throughout their scope by the specification. In addition, claims 35-41 stand
rejected under 35 U.S.C. § 103 as unpatentable over Neuberger, Cabilly and Hopp,
while claims 42-47 stand rejected under 35 U.S.C. § 103 as unpatentable over
Neuberger and Hopp.
We reverse all three of the rejections.
DISCUSSION
Enablement
In its broadest aspect, the claimed invention is directed to a chimeric protein (and
methods of making it) comprising an immunoglobulin moiety “having antigen binding
activity” and a non-immunoglobulin protein moiety “having a biological activity,” wherein
the non-immunoglobulin moiety is “carboxy terminal to” the immunoglobulin moiety, and
the chimeric protein “[has] said antigen binding activity and said biological activity.”
Claim 1. According to the examiner, however, the specification “is enabling only for
claims limited to chimeric antibodies which comprise a biologically functional non-Ig
protein for which working examples are disclosed in the specification.” Answer, page 6.
At the outset, we note that the examiner has applied this rejection to all of the
claims on appeal, even claims 38-41, which specify that the non-Ig portion of the hybrid
protein is RNase, the Klenow fragment of DNA polymerase I, ricin or c-myc. Inasmuch
as these claims correspond to the working examples, and the examiner has conceded
that the specification is enabling for “chimeric antibodies which comprise a biologically
functional non-Ig protein for which working examples are disclosed in the specification,”
the continued rejection of claims 38-41 on the ground of lack of enablement is illogical
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007