Appeal No. 1997-4380
Application No. 08/147,878
Wu-Pong, “Oligonucleotides: opportunities for drug therapy and research,”
Pharmaceutical Technology, Vol. 18, pp. 102-114 (1994)
Stull et al. (Stull), “Antigene, ribozyme and aptamer nucleic acid drugs: progress and
prospects,” Pharmaceutical Research, Vol. 12, No. 4, pp. 465-483 (1995)
GROUNDS OF REJECTION
Claims 1, 2, 5, 8 and 15-17 are rejected under 35 U.S.C. 112, first
paragraph, as being based on an insufficient disclosure to support or enable the
scope of the claims.
Claims 1, 2, 15-17 and 34 are rejected under 35 U.S.C. § 103 as being
unpatentable over Bielinska in view of Iademarco.
Claims 1, 5, 15 and 16 are rejected under 35 U.S.C. § 103 as being
unpatentable over Bielinska in view of Degitz.
Claims 1, 8, 15 and 16 are rejected under 35 U.S.C. § 103 as being
unpatentable over Bielinska in view of Montgomery.
We reverse the rejections under 35 U.S.C. § 103. We vacate the rejection
under 35 U.S.C. § 112, first paragraph and remand this application to the examiner
to reevaluate his enablement issues under the proper legal standards.
DISCUSSION
In reaching our decision in this appeal, we have given careful consideration
to the appellants’ specification and claims, and to the respective positions
articulated by the appellants and the examiner. We make reference to the
examiner’s Answer2 for the examiner’s reasoning in support of the rejection. We
2 Paper No. 23, mailed June 27, 1997.
3
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007