Appeal No. 96-0965
Application 08/054,548
that "[c]laim 8 is rejected under 35 U.S.C. § 112, first paragraph, for the reasons set
forth in the objection to the specification (emphasis added)." See page 8, second full
paragraph, of the Examiner's Answer.
The Hitchcock , Gallicchio , and "Virus sidesteps convergent therapy" references,
cited above, are not positively included in the statement of the examiner's rejection. As
stated in In re Hoch 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407, n.3 (CCPA 1970),
Where 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.
Where, as here, the Hitchcock, Gallicchio, and "Virus sidesteps convergent therapy"
references are not included in the statement of rejection under 35 U.S.C. § 112, first
paragraph, and where the examiner expressly states that no prior art references are relied
on in setting forth the rejection, we shall not consider these references further.
In the Final Rejection (paper no. 8), page 2, the examiner rejected claim 8 under 35
U.S.C. § 101 "because the claimed invention has no demonstrated utility for use in vivo."
According to the examiner, the specification teaches that combinations of the compounds
recited in claim 8 have been tested for anti-HIV activity in vitro. The
examiner argued, however, that the claim is not limited to providing a synergistic effect in
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