Appeal No. 1996-1005
Application 07/947,982
further relies upon Simons. Finally, claims 104 through 106 stand rejected under 35 U.S.C. §
103. In addition to the evidence of obviousness set forth in the first sentence of this
paragraph, the examiner relies upon Pardridge. We reverse.
DISCUSSION
The claims on appeal are directed to a polynucleotide molecule and a pharmaceutical
preparation containing as an active component one or more of the claimed polynucleotide
molecules. As set forth in claim 67, the polynucleotide molecule has two components. First,
the claim requires a polynucleotide molecule coding for a tRNA. Second, the claim requires a
polynucleotide molecule coding for a ribozyme. The second polynucleotide molecule must be
located between A- and B-boxes of the first polynucleotide molecule.
All of the rejections depend primarily upon the examiner's interpretation of Jennings.
In reviewing this aspect of the examiner's position, we find the examiner has read the
reference too broadly. We first point out that the specification of this application describes a
broader invention which may be termed generic to that now claimed in claim 67. In relevant
part, the broader invention only required as the second polynucleotide molecule a “DNA
coding for RNA-inhibiting RNA.” See, e.g., original claim 1. There are at least two specific
embodiments described in the specification of this application of “DNA coding for RNA-
inhibiting RNA,” i.e., antisense RNA and RNA coding for a ribozyme. See, e.g., original
claims 2 and 4. Jennings is directed to the antisense RNA aspect of the invention described
in the specification of the application and is cited by applicants in the paragraph bridging
pages 6-7 of the specification. However, during prosecution of this application, the claims
were narrowed to their present state and are now strictly limited to the second embodiment
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