Appeal No. 96-0965
Application 08/054,548
skilled in the art, enabling them to make and use the claimed invention. Nor does the
examiner directly attack the specification on how-to-make and/or how-to-use
grounds. Rather, it appears that the position espoused by the examiner under 35 U.S.C. §
112, first paragraph, is the very same position dropped under 35 U.S.C. § 101. According
to the examiner, Appellants' specification describes using the claimed composition for
inhibiting HIV cells in vitro; but in vitro data is not predictive of a synergistic effect in vivo.
In other words, the examiner would "backdoor" a rejection of claim 8 under 35 U.S.C. §
2
101 couched in terms of 35 U.S.C. § 112, first paragraph.
The record reflects that (1) the combination of first and second compounds, recited
in claim 8, provides a synergistic effect when tested for anti-HIV activity in vitro
(specification, pages 24 and 25); (2) zidovudine (AZT) is a commercially available
product, known for treating HIV in vivo in humans; (3) the other compound of claim 8 is also
disclosed for use in treating HIV in vivo (U.S. Patent No. 5,210,085, issued May 11, 1993
to Liotta et al.); and (4) parent application Serial No. 07/846,367 issued as
U.S. Patent No. 5,234,913 on August 10, 1993, claiming a pharmaceutical composition
2 As previously indicated, the Final Rejection included separate rejections of claim 8 under 35
U.S.C. § 101 and 35 U.S.C. § 112, first paragraph. Both rejections were based on essentially the same
reasoning. In the Examiner's Answer, the examiner dropped the rejection under 35 U.S.C. § 101 and
carried forward the rejection under 35 U.S.C. § 112, first paragraph.
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