Appeal No. 1995-2723
Application 07/858,747
arguments or evidence. Therefore the rejection of claims 1-11 under 35 U.S.C. § 103 is
affirmed.
OTHER ISSUES:
In addition, should further prosecution occur in this application, we urge the
examiner to consider whether the principles set forth in the decision of University of
California v. Eli Lilly & Co., 119 F.3d 1559, 43 USPQ2d 1398 (Fed. Cir.), reh'g denied (en
banc), 1997 U.S. App. LEXIS 31640 (1997), cert. denied, 118 S. Ct. 1548 (1998), and
Enzo Biochem Inc. v. Calgene Inc., __ F.3d__, 52 USPQ2d 1129 (Fed. Cir. 1999),
rendered by the Court of Appeals for the Federal Circuit since the filing of this appeal are
applicable to the current claims. In these decision, the court makes clear that the
consideration of claims directed to genetic materials differs from consideration of claims
directed to chemical materials in determining whether the claims are in compliance with
the written description requirement of 35 U.S.C. § 112, first paragraph and carefully
delineates how the analysis is to be made. The disclosure of the instant specification is
limited to mutation of a limited number of gag genes from HIV-1 virus. It is not readily
apparent to us that results observed on this limited scale could reasonable be practiced by
those skilled in this art to the scope of subject matter claimed without undue
experimentation. As explained in PPG Indus., Inc. v. Guardian Indus. Corp., 75 F.3d 1558,
1564, 37 USPQ2d 1618, 1623 (Fed. Cir. 1996):
In unpredictable art areas, this court has refused to find broad generic
claims enabled by specifications that demonstrate the enablement of only one or
12
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007