Appeal No. 1999-1434
Application No. 08/307,044
The examiner explains her position concisely on page 5 of the Examiner’s
Answer. She acknowledges that the specification shows that antibody 17-1A is
effective for treating gastrointestinal tumors or carcinomas. She also concedes
that methods of using antibodies M72 and M74 are enabled, because those
antibodies are “disclosed to bind the same or similar epitope identified by
monoclonal antibody 17-1A.” However, she concludes that the claimed method
is not enabled for antibodies M77 and M79 because
[t]he lack of evidence in the specification for these monoclonal
antibodies fails to provide a presumption that monoclonal
antibodies M77 and M79 will be therapeutically effective, based
solely on evidence that they bind the same 37 kD glycoprotein as
monoclonal antibodies 17-1A, M72 and M74, but not the same
antigenic epitope.
Examiner’s Answer, page 5 (emphasis in original).
We will not affirm this rejection. “Section 112 does not require that a
specification convince persons skilled in the art that the assertions therein are
correct.” In re Armbruster, 512 F.2d 676, 678, 185 USPQ 152, 153 (CCPA
1975). Rather, “a specification disclosure which contains a teaching of the
manner and process of making and using the invention in terms which
correspond in scope to those used in describing and defining the subject matter
sought to be patented must be taken as in compliance with the enabling
requirement of the first paragraph of § 112 unless there is reason to doubt the
objective truth of the statements contained therein which must be relied on for
enabling support.” In re Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369
(CCPA 1971) (emphasis in original).
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