Appeal No. 95-2319
Application 07/812,880
Ellis, Administrative Patent Judge, concurring-in-part, dissenting-in-part
In the case before us, I agree with the examiner that, given the combined teachings of
Stryer and Evans, it would have been prima facie obvious to one of ordinary skill in the art to
introduce the claimed DNA molecule into a mammalian cell by infection with a recombinant
virus comprising said DNA molecule. The examiner finds, and the appellants do not
contest, that Evans teaches the claimed bioassay, but he employs a different method of
introducing the DNA into the mammalian cells. That is, Evans transfects the mammalian
cells with the DNA molecule using a plasmid vector, rather than infecting with a viral vector.
Stryer specifically discloses that the methods of transfection and infection, as a means of
introducing a DNA molecule into a mammalian cell, are interchangeable. Thus, absent an
unexpected result, I would hold that it would have been obvious to persons of ordinary skill in
the art of molecular biology to employ another convenient, conventional method of
introducing a DNA molecule into a mammalian cell, such as infection, in the bioassay
described by Evans. Accordingly, in my view, the rejection of claims 1, 3, 9 and 15 should
be affirmed.
I note the appellants’ statement of p. 2 of the Reply Brief, that claims 2, 16 and 21, do
not stand or fall with claims 1, 3, 9 and 15. Therefore, for purposes of this appeal, I would
consider this aspect of the rejection as it applies to the broadest claim, claim 2. To that end,
the appellants argue that the claim requires that the mammalian cells be “co-infected with
recombinant virus.” Reply Brief, p. 8. However, the claim merely “reads on” the infection of
a mammalian cell with two or more of the viruses described in claim 1. Accordingly, I would
10
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007