Appeal No. 1999-1433
Application 08/453,852
Discussion
I. The double patenting rejection
The examiner has rejected claims 1, 2, 4, 5 and 14 under the judicially-created
doctrine of obviousness-type double patenting. The examiner argues that the present
claims, which are directed to enhancing an immune response to any non-tumor antigen
using tumor necrosis factor (TNF), would have been obvious to one of ordinary skill in
the art in view of claims 1-5 and 8 of U.S. Patent 4,963,354 which describe a method of
enhancing an immune response to a tumor antigen using TNF. Answer, p. 4.
In response, the appellants do not contest the examiner’s rejection. Rather, they
simply state that they will file a terminal disclaimer once there is an indication of
allowable subject matter. Brief, p. 17. However, an intention to file a terminal
disclaimer is not sufficient to overcome the rejection. Accordingly, Rejection I is
affirmed.
II. The 35 U.S.C. § 112, first paragraph, rejections
A. Written description/new matter
The examiner argues that the subject matter of claims 5 and 6 is not supported
by the specification as originally filed. According to the examiner, there is no basis for a
“native” substance in the specification and, therefore, the use of this term in claim 5
constitutes the introduction of new matter. Answer, p. 5. We disagree.
We point out that it is not necessary for the specification to describe the claimed
5
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