Appeal No. 1998-0667 Page 10
Application No. 081280,306
the exogenous material, i.e., DNA, into a host cell so that the DNA was taken up by the
cell and was biologically functional in the cell. The examiner agrees with appellants that
the results reported in Sandig indicate that the pseudocapsids formed of VP1 were
unable to transfer the associated DNA into a host cell so that the DNA was biologically
functional. The examiner argues in the paragraph bridging pages 15-1 6 of the
Examiner's Answer in responding to appellants' arguments:
There are two possible explanations for the difference in the results
obtained by Sandig et al. and Appellants. One explanation is that
Appellants discovered how to use the particles of Sandig et al. to transfer
and express DNA in cells. But 'discovery of an unobvious property and
use does not overcome the statutory restraint of section 102 when the
claimed composition is known' (In re Spada, p. 1658). The second
possible explanation is that Appellants discovered a new method for
making pseudocapsids andlor associating DNA therewith, which
somehow changes the physical properties of the composition. If this is
the case, the claim does not incorporate whatever process of manufacture
might distinguish the claimed composition from that disclosed by Sandig
et al.
This issue car1 be readily resolved by simple reference to Sandig and the present
specification. In reporting the results concerning ,the pseudocapsids consisting of VP1 ,
Sandig states that the results are "consistent with electron microscopy data showing
only particles adsorbed to the cell surface." In other words, the pseudocapsids
described in Sandig and relied upon by the exarrliner in support of this rejection had the
exogenous DNA adsorbed to the pseudocapsid surface and not contained therein. In
contrast to this description of the particles of Sandig, the present specification states:
By the exogenous rrlaterial being 'associated with' the pseudocapsid, we
mean that the material is protected thereby. For example, exogenous
DNA will be protected frorrl degradation by DNases such as DNasel, and
exogenous protein will be protected frorrl proteases. The exogenous
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