Appeal No. 2000-0591
Application No. 08/311,291
that PCV is “moderately to highly active against HSV-1, HSV-2, CMV, VZV and EBV . . .
and “three of six animal herpesviruses against which it was tested” (Reply Brief, pages
6 and 7) in vitro , and also “that in vitro activity of the acyclic nucleosides [ACV and
GCV] correlates with in vivo activity against the herpesviruses” with respect to
production of infectious virus. See the declarations of Klaus Esser and David Sutton,
and, for example, Boyd, which teaches that “[p]arallels may be drawn between the
measurement of infectious virus yield in cell cultures and virus shedding by patients”
(page 9).7
In our judgment, appellants’ disclosure “contains a teaching of the manner and
process of making and using the invention in terms which correspond in scope to those
used in describing and defining the subject matter sought to be patented” and therefore
satisfies the enablement requirement of the first paragraph of 35 U.S.C. § 112.
Accordingly, the rejection of the claims is reversed.
Obviousness
The examiner has rejected claims 27, 28, 43, 51, 57-60, 99-103 and 109-120
under 35 U.S.C. § 103 as unpatentable over Hannah.
7 We note appellants’ submission of Exhibit 1 with the Brief, consisting of several
excerpts from Field’s Virology (Third Edition, Bernard N. Field et al., eds., Lippincott-
Raven Publishers, pp. 441-443, 2415, 2493, 2511, 2567-2570 (1996)). Certainly it was
within the examiner’s discretion to refuse to consider this submission (Answer, page
16), but we note that the excerpts appear to buttress appellants’ assertions on pages
18-20 of the Brief that in vitro activity of the acyclic nucleosides ACV and GCV
correlates with in vivo activity against the herpesviruses, at least with respect to
production of infectious virus.
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