Appeal No. 2002-1545 Page 4
Application No. 08/949,757
DISCUSSION
Rejections under 35 U.S.C. § 112 First Paragraph
Claims 1-6, 27, 31-39 and 42 stand rejected under 35 U.S.C. § 112, first
paragraph, on two grounds: 1) that the specification fails to enable the full scope
of the claimed subject matter; and 2) that the specification fails to provide
adequate written description for the claimed invention.
We would like to initially note that the examiner addressed these two
grounds of rejection together. They are, however, different and separate
rejections, see Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d
1111, 1116-17 (Fed. Cir. 1991), and require separate and different analyses. In
the future, we recommend that if both rejections are appropriate based on the
record, that they be made and analyzed separately. But given our disposition of
the appeal, we do not find it necessary to remand the application to the examiner
to perform that separate analysis.
According to the rejection:
Claims 1-6, 27, 31-32, 33-39 and 42 are rejected under 35
U.S.C. 112, first paragraph (scope), because the specification,
while being enabling for the antigen produced by ATCC 202013,
does not reasonably provide enablement for any antigen
comprising the recited four sugars, having any type of chemical
bonds, any orientation one to the other . [sic] The specification
does not enable any person skilled in the art to which it pertains, or
with which it is most nearly connected, to make and use the
invention commensurate in scope with these claims.
The specification fails to provide adequate written
description for the claimed genus of carbohydrates from
Enterococcus because it does not disclose representative species
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