Appeal No. 1999-1223 Page 2
Application No. 08/446,021
1. A method of altering the phenotype of a bird, comprising introducing avian
somatic tissue-specific stem cells into an egg containing a bird during in ovo incubation,
said cells containing and capable of expressing at least one DNA molecule in an
amount effective to cause a change in the phenotype of the bird.
12. A method of altering the phenotype of a bird comprising introducing avian
embryo cells into the air cell of an egg containing a bird during in ovo incubation, said
embryo cells containing and capable of expressing at least one DNA molecule in an
amount effective to cause a change in the phenotype of the bird.
22. A method of altering the phenotype of a bird comprising introducing avian
somatic tissue-specific stem cells to the air cell of an egg containing a bird during in ovo
incubation, the avian somatic tissue-specific stem cells containing and capable of
expressing at least one DNA molecule in an amount effective to cause a change in the
phenotype of the bird.
Claims 1 through 25 and 27 through 32 stand rejected under 35 U.S.C. § 112,
first paragraph (enablement). The examiner states at page 2 of the Examiner's Answer
that "[n]o new prior art has been applied in this examiner's answer." However, in
expressing the rejection on pages 2-7 of the Examiner's Answer, the examiner relies
upon references identified as Shuman, Salser, and Brazolot. A review of the Final
Rejection reveals that the examiner did not rely upon these or any other references in
support of the enablement rejection. Thus, the examiner's statement that she does not
rely upon any new references in support of the rejection is incorrect. As set forth in In
re Hoch, 428 F.2d 1341, 1342 n. 3, 166 USPQ 406, 407 n. 3 (CCPA 1970), "Where a
reference is relied on to support a rejection, whether or not in a 'minor capacity,' there
would appear to be no excuse for not positively including the reference in the statement
of the rejection." The propriety of the examiner relying upon new references in support
of a rejection in the Examiner's Answer is not apparent. Under these circumstances,
we will review the examiner's rejection as set forth in the Examiner's Answer to the
extent it does not rely upon the new evidence. On this basis, we reverse the rejection.
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