Appeal No. 95-2208
Application 07/987,572
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final rejection of claims
1 through 11. Subsequent to the final rejection, appellants canceled claims 3, 4, and
7 and added claims 15 through 17. Thus, claims 1, 2, 5, 6, 8 through 11 and 15 through 17
are before us for consideration. Claims 12 through 14 are pending, but have been
withdrawn from consideration by the examiner.
Claims 1 and 2 are illustrative of the subject matter on appeal and read as follows:
1. A vector comprising:
(a) a sufficient number of nucleotides corresponding to an HIV genome to express
HIV gene products necessary for viral replication and infectivity (the HIV segment); and
inserted in the HIV segment (I) in a region of non-essential HIV nucleotide sequences or (ii)
instead of a region of non-essential HIV nucleotide sequences
(b) a sufficient number of nucleotides corresponding to a heterologous gene to
express a functional protein (the heterologous gene segment).
2. The vector of claim 1, wherein the heterologous gene segment corresponds to a
marker gene.
The examiner states at page 4 of the examiner's answer (Paper No. 22, August 15,
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1994) that prior art is not relied upon in support of the rejection of the claims on appeal.
The examiner lists four documents at page 5 of the examiner's answer, stating that the2
references are “relied upon for support of the arguments presented here and below.” As stated in In re
Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970) “[w]here a reference is relied on to
support a rejection, whether or not in a 'minor capacity,' there would appear to be no excuse for not
positively including the reference in the statement of the rejection.” Since the examiner has stated that he
does not rely upon prior art in support of the rejection of record, we have not considered the four references
(continued...)
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