Appeal No. 1996-2639
Application No. 08/176,320
§ 103 as obvious over Holland, (2) of claim 8 under 35 U.S.C. § 112, second paragraph, as indefinite
and (3) of claims 7 and 8 under 35 U.S.C. § 112, fourth paragraph, as failing to further the subject
matter of a previous claim, i.e., claim 6 (answer, pages 6-9, section (10) entitled “New grounds of
rejection”). In the answer, page 16, the examiner states as follows:
In view of the new ground of rejection, appellant is given a period of TWO
MONTHS from the mailing date of this examiner’s answer within which to file a reply
to any new ground of rejection. Such reply may include any amendment or material
appropriate to the new ground of rejection. Prosecution otherwise remains closed.
Failure to respond to the new ground of rejection will result in dismissal of the appeal of
the claims so rejected.
Appellants failed to respond to the new grounds of rejection and, accordingly, the appeal with respect
to claims 7, 8, 58 and 63 is dismissed. Thus, claims 6, 9 through 13, 22, 43 and 66 through 71 are2
the only claims remaining on appeal.
Claims 6 and 13 are illustrative of the subject matter on appeal and read as follows:
6. An isolated and purified nucleic acid molecule comprising a fragment
consisting of a sequence encoding a herpes simplex 1 protease, said molecule being
engineered through the introduction of one or more genetic control elements to control
the expression of said coding sequence, wherein said control element is one that does
not normally control expression of the herpes virus protease in the herpes virus genome.
13. The nucleic acid molecule of claim 6 comprising a map region essentially as
set forth in Figure 1, line 5 or line 6.
2 On March 31, 2000, Gloria Henderson, paralegal with the Board of Patent Appeals and Interferences,
spoke on the telephone with Steven L. Highlander, Reg. No. 37,642, counsel for appellants. In that telephone
conversation, counsel indicated that no reply brief was filed in response to the new grounds of rejection and that
those claims will probably be dropped.
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