Appeal No. 2001-0562 Page 4
Application No. 08/460,478
Claims 81, 101, 102, 104, 119 and 120 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over ‘945 in view of Cohen-Haguenauer,
Braithwaite and Stratford-Perricaudet and further in view of ‘979.
We reverse.
DISCUSSION
THE REJECTIONS UNDER 35 U.S.C. § 112, FIRST PARAGRAPH:
The examiner relies (Answer, pages 10-13) on the teachings of Orkin,
Neve and Friedmann to support the rejection of claims 81, 82, 85-102, 122, and
123. According to the examiner (Answer, pages 10-11) Orkin makes several
conclusions that would lead one skilled in the art to conclude that the practice of
the claimed invention would require undue experimentation. With reference to
Neve, the examiner finds (Answer, page 11) the:
working examples disclosed in the specification show that for most
sites of injection, the adenoviral infection was highly local,
illustrating the need for one skilled in the art to know the precise
location of the nervous system that the recombinant adenoviral
vector needs to be injected for treating a given disease or studying
a particular research problem.
With reliance on Friedmann, the examiner finds (Answer, page 11) there are
“tremendous barriers to the practical application of gene therapy of the CNS,
such as the high complexity of the CNS and the lack of knowledge of the genetic
basis for the vast majority of neurological diseases and disorders.”
The rejection of claims 81, 82 and 85-102:
While the examiner makes a number of comments with regard to claims
81, 82 and 85-102, the examiner concisely states his position at page 20 of the
Answer:
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