Appeal No. 2003-0847 Page 9
Application No. 08/744,685
recombinant proteins in general, nor that its is an issue with respect to the
claimed homologous recombination insertional expression vector.
Third, the rejection is concerned with the difficulties that may be
associated with immunoglobulin gene expression. The rejection, does not
however, address why it would require an undue amount of experimentation to
express immunoglobulin genes in the claimed homologous recombination
insertional vectors, especially as the specification exemplifies the expression of a
recombinant antibody. Moreover, a claim may encompass inoperative
embodiments and still meet the enablement requirement of 35 U.S.C. § 112, first
paragraph. See Atlas Powder Co. v. E.I. Du Pont De Nemours & Co., 750 F.2d
1569, 1576, 224 USPQ 409, 413 (Fed. Cir. 1984), In re Angstadt, 537 F.2d 498,
504, 190 USPQ 214, 218 (CCPA 1976), In re Cook, 439 F.2d 730, 732, 169
USPQ 298, 300 (CCPA 1971).
Finally, the rejection is concerned with the breadth of the claims and that
the claims encompass expression in any mammalian cell, and are not limited to
NS/O cells. That concern is not understood, however, as the claim requires that
the recombinant gene be capable of being expressed in NS/O cells. That the
recombinant gene may or may not be capable of being expressed in other cell
types by the claimed homologous recombination insertional vector is irrelevant.
Moreover, the fact that aberrant glycosylation of recombinant proteins may be a
problem in NS/O cells, and such glycosylation may affect the structure, stability
and solubility of any expressed protein, also does not render the claims non-
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