Appeal No. 95-4435
Application No. 07/833,146
The oligonucleotides may be used in vitro or in
vivo for modifying the phenotype of cells, or for
limiting the proliferation of pathogens such as
viruses, bacteria, protists, Mycoplasma species,
Chlamydia or the like, or for inducing morbidity in
neoplastic cells or specific classes of normal
cells.
Manifestly, the specification describes in vitro utilities,
contrary to the examiner's characterization. Where, as here,
a legal conclusion of non-enablement is based on clearly
erroneous fact-finding, the legal conclusion cannot stand.
Furthermore, the Examiner's Answer is internally
inconsistent and procedurally flawed. In the Answer, page 2,
sections (7) and (8), the examiner states that no prior art of
record is relied on, nor is any new prior art cited or relied
on in rejecting the appealed claims. Nevertheless, in the
Examiner's Answer, paragraph bridging pages 6 and 7, and in
the first full paragraph of page 7, the examiner makes
reference to the "Ulhmann et al." publication. In the
Examiner's Answer, the examiner does not provide a citation
for "Ulhmann et al.," nor is it clear from the record just
what this publication is. Apparently, the examiner does rely
on it. This, in and of itself, constitutes reversible error.
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