Appeal No. 96-0965
Application 08/054,548
Hematopoietic Toxicity Following Administration of Interferon - å With Combination
Dideoxynucleoside Therapy (Zidovudine Plus DDI) Administered in Normal Mice", Life
Sciences, vol. 56 no. 3, pgs. PL71-81 (1995); and "Virus sidesteps convergent therapy",
Treat. Issues, vol. 9, no 1, pg. 6 (Jan. 1995). This is confusing, because it is unclear
whether the examiner is, or is not, relying on prior art references to establish that the
appealed claim is unpatentable.
Adding to the confusion, section (9) of the Examiner's Answer is entitled "Grounds
of rejection", but no grounds of rejection are set froth therein. There, the examiner objects
to the specification under 35 U.S.C. § 112, first paragraph, "as failing to provide an
enabling disclosure for the scope of the invention as claimed". The reasons for this
objection are set forth in the Answer, page 4, first full paragraph. According to the
examiner, Appellants' specification describes the use of both compounds recited in claim
8, in combination, to achieve a synergistic effect in inhibiting HIV in cells in vitro. The
examiner argues, however, that claim 8 is not limited to in vitro use, and that predicting
synergistic efficacy in vivo from Appellants' in vitro results would not have been accepted
by any person skilled in the art. Later, in section (11) of the Examiner's Answer, entitled
"Response to argument", the examiner states
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