Appeal No. 1999-1510
Application No. 08/447,997
so in a manner that can be understood by those skilled in the art. No more is
required.
The examiner’s concern may be that those skilled in the art would not be
able to determine easily (i.e., based on phenotype) whether a given cell or
transgenic mammal was within the scope of the instant claims. However, “the
fact that some experimentation may be necessary to determine the scope of the
claims does not render the claims indefinite.” Exxon Research & Eng’g Co. v.
United States, No. 00-5077, 2001 U.S. App. LEXIS 20590, at *20 (Fed. Cir. Sept.
19, 2001).
2. The obviousness rejections
The examiner rejected all of the claims as obvious over the disclosures of
Robinson and McKay, combined with either of Hug or Mitchell. The examiner
characterizes Robinson as disclosing DNA encoding SV40 large T antigen
“under control of a promoter that is highly regulated with respect to activity, both
temporally and spatially,” and characterizes McKay as “one of many references
that disclosed expression of DNA encoding SV40 large T antigen and that T-
antigen has the function of growth or cell proliferation.” Examiner’s Answer, page
5. The examiner cites Hug and Mitchell, alternatively, as disclosing the Mx-1
promoter. See id., page 5 (Hug “disclosed that expression of DNA under the
control of the Mx promoter is regulated by the presence/absence of interferon.”)
and page 6 (Mitchell disclosed that “the Mx gene promoter had been used to
express heterologous DNA in transgenic mice.”).
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