Appeal No. 2006-0148 Page 5 Application No. 09/933,309 Thus, the specification makes clear that an “immunological equivalent” of a transplanted organ or tissue is a donor-specific cell or antigen that stimulates deletion or anergy of the immune system cells that would otherwise cause rejection of the transplanted organ or tissue. The specification states that one example of an immunological equivalent is “bone marrow cells.” In our view, “the claims, read in light of the specification, reasonably apprise those skilled in the art and are as precise as the subject matter permits,” Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1385, 231 USPQ 81, 94-95 (Fed. Cir. 1987), and therefore comply with the second paragraph of 35 U.S.C. § 112. 3. Enablement The examiner rejected claims 16-22 and 32-34 under 35 U.S.C. § 112, first paragraph, on the basis that the claimed method is not enabled by the specification’s disclosure. The examiner reviewed several of the references submitted by Appellant to show thymic regeneration and lack of rejection following intrathymic injection of antigen (Examiner’s Answer, pages 5-6) and concluded that, “[w]hile the literature submitted by Appellant teaches regeneration of age-involuted thymus, the experiments were only executed in rats, there was no significant improvement of cellular immune function and there were harmful side effects (reduced testosterone concentrations, hepatic tumors).” Id., page 7. The examiner also faulted the level of disclosure in the specification, arguing that: • “[t]he specification does not provide guidelines to determine thymic atrophy or involution” (Examiner’s Answer, page 7);Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 NextLast modified: November 3, 2007