Appeal No. 1999-1433
Application 08/453,852
invention ipsissimis verbis; all that is required is that it reasonably convey to those
skilled in the art that, as of the filing date sought, the inventor was in possession of the
claimed invention. Union Oil of California v. Atlantic Richfield Co., 208 F.3d 989, 997,
54 USPQ2d 1227, 1232 (Fed. Cir. 2000); Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,
1563-64, 19 USPQ2d 1111, 1119 (Fed. Cir. 1992); In re Gosteli, 872 F.2d 1008,1012,
10 USPQ2d 1614, 1618 (Fed. Cir. 1989); In re Edwards, 568 F.2d 1349, 1351-52,
196 USPQ 465, 467 (CCPA 1978).
Here, we agree with the appellants that the teachings of the specification as a
whole, reasonably convey to those skilled in the art that substances against which it
may be desired to induce an immune response, can include those substances which
are “native” to the host animal. See, e.g., the specification, p. 3, lines 14-25; p. 11,
lines 9-13. We find the term “native” in claim 5 to have the same meaning as the terms
“endogenous” and “homologous” in the specification. That is, we find, and the
examiner appears to agree,2 that all of these terms are synonymous in that they all refer
to something which is not foreign to the animal host.
Accordingly, Rejection II is reversed.
B. Enablement
2 We direct attention to the enablement rejection wherein the examiner states
that the method of claim 5 involves the use of “a substance native to the animal, rather
than foreign to the animal.” Answer, p. 5. Thus, it is not clear to us as to why the
examiner has even raised this issue under the second paragraph of § 112.
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007