Appeal No. 1997-4277
Application No. 08/290,038
Therefore, the examiner has failed to provide the evidence necessary to
support a prima facie case of obviousness within the meaning of 35 U.S.C. § 103.
Accordingly, we reverse the rejection of claims 5, 7, 14 and 16 under 35 U.S.C. §
103 as being unpatentable over Kyoizumi in view of McCune and Namikawa.
Claim 13:
The examiner argues (Answer, page 5) that:
It would have been obvious to one of skill to modify the host mouse of
Kyoizumi by infecting it with HIV-1 in view of the teachings of McCune
that a SCID-hu mouse having transplanted human tissues is a useful
animal model of human HIV-1 disease and that further work with the
animal model may provide additional and novel routes for the analysis
of human disease states and their treatment. … Accordingly, the
modification of the mouse of Kyoizumi by infecting the mouse with
HIV-1 as suggested by McCune was within the ordinary skill in the art
at the time the claimed invention was made.
We remind the examiner that every limitation positively recited in a claim
must be given effect in order to determine what subject matter that claim defines. In
re Wilder, 429 F.29 447, 450, 166 USPQ 545, 548 (CCPA 1970). Here, claim 13
adds the limitation to claim 9, wherein said hybrid tissue is infected with a human
tropic virus. While the examiner focused on the “human tropic virus” limitation, the
examiner failed to explain how the references relied upon teach or suggest a mouse
comprising a hybrid tissue “formed by viable normal human fetal bone fragments,
normal human fetal spleen tissue and normal human fetal thymus tissue grown in
juxtaposition,” as is required by claim 9.
To the extent that the examiner intends to rely on Kyoizumi for this teaching
by stating (Answer, page 5) that claim 13 is “unpatentable over Kyoizumi as applied
10
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