Appeal No. 2001-2316 Page 9
Application No. 08/187,879
does not refer solely to protection against infection per se (although that is
contemplated)….” Thus, lessening the manifestation of disease is merely one
component of the full scope of the invention claimed.
Appellants’ recognize (Reply Brief, page 11), the examiner’s reference to
Rekosh, Weiss and Cohen acknowledging that these references “point out the
difficulties associated with development of a vaccine targeting HIV.”
Nevertheless, appellants argue (id., emphasis added) that they have
“demonstrated that immunization of a mammal by administering to the mammal a
DNA transcription unit comprising a DNA encoding an antigen of SIV, whereby
the mammal was protected at least partially from the manifestations of disease
caused by the SIV, is indeed possible.” As discussed above, partial protection is
merely one component of the full scope of appellants’ claimed invention. What is
missing is evidence demonstrating that the specification provides an enabling
description of the full scope of the claimed invention.
IV. The relative skill of those in the art:
While neither the examiner nor appellants take issue with the level of skill
in the art, we find the level of skill in the art of genetic engineering and
immunology to be high. Cf. Enzo, 188 F.3d at 1373, 52 USPQ2d at 1137;
Wands, 858 F.2d at 740, 8 USPQ2d at 1406.
V. The amount of direction or guidance presented/ the presence or absence
of working examples:
According to the examiner (Answer, page 10), “examples 11-15 of the
specification describe making and administering DNA vectors encoding antigens
of SIV and HIV, but [a]ppellants have not provided any guidance and/or factual
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