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REMARKS 

The Examiner has cited a number of decisions of the Board of Patent Appeals and 
Interferences and the courts in regard to the rejection of Applicants' claims for lack of 
enablement under 35 U.S.C. 112, first paragraph. One of these decisions is In re Fisher 
166 USPQ18 of the CCPA. In re Fisher is a regularly cited case in Board and court 
decisions on enablement. Applicants have previously given reasons for why they believe 
that In re Fisher supports their position that all of Applicants' claims rejected for lack of 
enablement are in fact enabled. 

Applicants herein are presenting an application of In re Fisher to the facts of the 
present prosecution that they have not previously presented. Applicants are submitting 
this in a Response After Final rejection in the hope that this new look at In re Fisher may 
avoid the necessity of filing an appeal brief. 

Applicants respectfully requests the Examiner and Supen/isor Examiner to 
reconsider the rejection of Applicants' claims that have been rejected for lack of 
enablement in view of these new comments on In re Fisher and related decisions of the 
USPTO Board of Patent Appeals and Interferences and court decisions. 

In In re Fisher 166 USPQ 18 two claims (4 and 5) were under appeal. Claim 4 was 
directed to "A method ... for producing ACTH [adrenocorticotrophic honnones] 
preparations having potencies ranging from 1 11 % to 230% of standard and containing no 
more than 0.08 units of vasopressin and no more than 0.05 units of oxytocin per 
Intemational Unit of ACTH. which limits are said to be tolerable to humans." 166 USPQ 
18, 20. "The claim recites that the product must contain 'at least* 24 amino acids In a 
specified sequence," 166 USPQ 18, 21 . To avoid a reference to Li, having a publication 
date prior to the filing date, the appellant relied on its parent application of which the 
application under appeal was a continuation-in-part. The CCPA states: 

Appellant's parent application, therefore, discloses no products, 
inherently or expressly, containing other than 39 amino acids, yet the 
claim includes all polypeptides, of the recited potency and purity, having 

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at least 24 amino acids in the chain in the recited sequence. The parent 
specification does not enable one skilled in the art to make or obtain 
ACTH's with other than 39 amino acids in the chain, and there has been 
no showing that one of ordinary skill would have known how to make or 
obtain such other ACTH's without undue experimentation. As for 
appellant's conclusion that the 25th to 39th acids in the chain are 
unnecessary, it is one thing to make such a statement when persons 
skilled in the art are able to make or obtain ACTH having other than 39 
amino acids; it is quite another thing when they are not able to do so. in 
the latter situation, the statement is in no way "enabling" and hence lends 
no further support for the broad claim. We conclude that appellants 
parent application is insufficient to support a claim as broad as claim 4. 
For this reason we affirm the board's rejection of claim 4 as unpatentable 
over the Li references. 

From this statement, it Is clear that the reason for why the CCPA did not find the clainr^s 
under appeal patentable was that the applicant did not teach how to make ACTH with 
anything but 39 amino acids and there was no evidence in the record that a person of skill 
in the art knew how to make ACTH with anything but 39 amino acids. It is also clear that 
if persons of skill in the art knew how to make ACTH with more or less than 39 amino 
acids, the claims would not have been found not enabled. 

In regard to the rejection of Fisher claims 4 and 5 for lack of enablement the CCPA 

states: 

We have already discussed, with respect to the parent application, the 
lack of teaching of how to obtain other-than-39 amino acid ACTHs. That 
discussion is fully applicable to the instant application, and we think the 
board was correct in finding insufficient disclosure due to this broad 
aspect of the claims. 166 USPQ 18. 23. 

Thus the claims in Fisher were found not enabled because the Fisher application did not 
teach how to make "other-than-39 amino acid ACTHs" and there was no evidence in the 
record that persons of skill in the art knew how to make "other-than 39 amino acid 
ACTHs." 

In regards t the rejection for enablement, the CCPA further states: 

The issue thus presented is whether an inventor who Is the first to 
achieve a potency of greater than 1.0 for certain types of compositions, 
which potency was long desired because of its beneficial effect on 
humans, should be allowed to dominate all such compositions having 

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potencies greater than 1,0. including future compositions having 
potencies far in excess of those obtainabl© from his teachings plus 
ordinary skill. 166 USPQ 18, 23. 

Thus the CCPA rhetorically asks the question whether Ihe first person to discover a 
composition having a potency greater than 1 where such potency is of significant value 
should be allowed a claim "including future compositions having potencies far in excess of 
those obtainable from his teachings plus ordinary skill," 

The CCPA answers this rhetorical question stating: 

It Is apparent that such an inventor should be allowed to dominate the 
future patentable inventions of others where those inventions were 
based in some way on his teachings. 166 USPQ 18,24 

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