Appeal No. 1996-2639
Application No. 08/176,320
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USPQ 71, 76 (CCPA 1979) . Indeed, in allowing related application no. 07/832,855, this same
examiner stated in her reasons for allowance that
Applicants have shown that the HSV U 26 open reading frame encodes a
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protease; the biological activity and function of this protein was not previously known in
the art. The newly submitted claims (amendment of 7/3/95) are drawn to an assay to
identify agents that inhibit the HSV protease. The amendment overcomes the previous
art rejections because, in order to assay for an enzyme-inhibiting agent, one would need
to know the enzyme exists. This was not known in the art at the time the invention was
made. The claims are thus deemed to be novel and unobvious. [Notice of Allowability,
Paper No. 26, mailed July 10, 1995, in application no. 07/832,855, now U.S. Patent
No. 5,478,727, issued Dec. 26, 1995, copy attached to this decision.]
It appears incongruous for the same examiner to allow claims which require “a purified HSV protease
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encoded by at least domains II and III of U 26 gene” because it was not even known that HSV
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possessed a viral protease and to maintain that it would have been obvious to clone a nucleic acid
sequence for an enzyme not previously known to exist. Therefore, although it may have been within
ordinary skill in the art to ligate the U 26 open reading frame sequence of McGeoch into a cloning
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4Application No. 08/176,320, filed January 3, 1994, is a continuation of application no. 07/705,814, filed May
24, 1991, now abandoned. U.S. Patent 5,478,727, issued from application no. 07/832,855 which (a) was a continuation-
in-part of application no. 07/705,814 and (b) was the same application which was the basis for the withdrawn
provisional double patenting rejections noted above.
5 Claim 1 in issued U.S. Patent 5,478,787 reads as follows:
1. An assay method to identify a substance capable of inhibiting a herpes virus protease
comprising:
(a) obtaining a purified HSV protease encoded by at least domains II and III of U 26 gene;
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(b) adding to said protease a protein substrate containing the cleavage site of said protease under
conditions appropriate to effect proteolytic cleavage of said substrate;
(c) adding to said protease a candidate inhibitor substance; and
(d) determining whether said protein substrate has been cleaved.
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