Appeal No. 2000-1919
Application No. 08/831,993
concentration, the antibody was visualized exclusively within the parasite inside
infected erythrocytes.” Page 6.
Discussion
The examiner rejected all of the claims as nonenabled because the
claimed effect on intracellular parasites is contrary to what would be expected
based on the prior art. See the Examiner’s Answer, pages 3-4 (emphasis in
original):
Gwadz et al. teach that the magainin peptide could disrupt
extracellular stages of the parasites but had no effect on
intracellular development. . . . [T]he question is whether there is a
predictability in the prior art that, despite the cited teaching of
Gwadz et al., magainins can [a]ffect intracellular development of
malaria parasites. . . . The prior art, however, does not indicate that
magainins, instead of being either bound to plasma membrane of a
cell or lysing a cell altogether, are capable of permeating into
intracellular space of a live cell.
The instant disclosure provides no evidence that the observed
effects of magainin on malaria parasites are due to inhibition of
parasite’s intracellular development, and is [sic] not due to effect of
magainins on parasites located outside erythrocytes (the latter
effect is well documented in prior art).
The examiner acknowledges the working examples in the specification but
disputes their probative value. The examiner characterized the first example as
providing “[n]o evidence” to support the claimed invention. See the Examiner’s
Answer, pages 4 -5:
Example 1 offers Table 1 with some unidentifiable numbers and
informs that parasitemia assays were performed according to
Pasvol or Magovan. The cited references, however, teach a
number of assays and various ways of data analysis which make it
impossible to one skilled in art to identify the origin of the numbers
presented in the instant Table 1. Further, because the description
of Example 1 informs that magainin was added in extracellular
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