Appeal No. 95-1390
Application 07/752,639
d) a synthetic peptide comprising at least 17 amino acids and at least one
antigenic structure, said peptide derived from the HTLV-II env gene.
Claims 2 through 6 and 9 through 13 stand rejected under 35 U.S.C. § 103. As
evidence of obviousness, the examiner relies upon twelve documents which are listed on
pages 2-4 of the Examiner's Answer (Paper No. 17, April 14, 1994). We reverse.
DISCUSSION
We first note that the claims on appeal have not been examined on the merits
throughout their scope. This has happened as a result of a requirement to elect a species.
See Sections 15-22 of the first Office action on the merits (Paper No. 7, December 17,
1992). While the record is unclear as to which peptides appellants elected in response to
this requirement, the examiner states at page 11 of the Examiner's Answer that only four of
the peptides involved in the present invention have been considered on the merits. These
are the four peptides identified in claim 6 reproduced above as HTLV-I gag 111-130,
HTLV-II gag 117-136, HTLV-I env 190-213, and HTLV-II env 186-209. Thus, in deciding
this appeal, we pass judgment only on that aspect of the claimed invention which requires
the presence or use of these four peptides.
By statute, this board serves as a board of review, not as a de novo examination
tribunal. 35 U.S.C. 7(b) (“The [board] shall . . . review adverse decisions of examiners
upon applications for patents . . . “). Here, the statement of the rejection under
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