Ex parte PAVLAKIS et al. - Page 12



              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