Appeal No. 1997-4380
Application No. 08/147,878
an opportunity to reevaluate the issue of enablement in view of the correct legal
standards. In reconsidering the issue of enablement, we recommend that the
examiner review Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 1371, 52
USPQ2d 1129 1371 (Fed. Cir 1999). Therein, the court provided a model analysis
of enablement issues and illustrates the type of fact finding which is needed before
one is in a proper position to determine whether a given claim is enabled or non-
enabled.
THE REJECTIONS UNDER 35 U.S.C. § 103:
In each of the three sets of rejections under 35 U.S.C. § 103 the examiner
cites Bielinska in view of either Iademarco, Degitz or Montgomery. In each
statement of rejection the examiner states (Answer, pages 7, 8, and 9) that:
“Bielinska et al. teach a method for inhibiting gene transcription in
human cells by administration of double-stranded oligos having
sequences of transcription factor binding sites (entire document).
Bielinska et al. state that “[w]ith the method described in this report,
funciton of the DNA-binding proteins themselves can be inhibited if
the cis-acting regulatory elements have been characterized” (p. 999,
cols. 2-3).
However, the examiner finds (Answer, pages 7, 9, and 10) that Bielinska does not
teach the sequence of the human VCAM-1 promoter (claims 1, 2, 15-17 and 34),
ICAM-1 promoter (claims 1, 5, 15 and 16), or E-selectin promoter (claims 1, 8, 15
ad 16).
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