Appeal No. 1999-1223 Page 4
Application No. 08/446,021
appellants in this appeal proceeding, we do not have the benefit of appellants' views in
regard to the new evidence the examiner relies upon. This is another reason why it is
appropriate to consider the examiner's position sans the new evidence.
As seen from the claims reproduced above, the subject matter on appeal
involves altering the phenotype of a bird by introducing specified cells into an egg
containing a bird during in ovo incubation. The specified cells contain and must be
capable of expressing at least one DNA molecule in an amount effective to cause a
change in the phenotype of the bird. As stated on page 7 of the Appeal Brief:
The Examiner acknowledges that Appellants have established the
ability of such cells to migrate to the avian embryo and persist in the
hatched chick. As stated in the Final Office Action of 4 September 1996
(at page 4): "the transformed cells would need to reach their target, which
the applicant has shown the instant method to achieve"; and "(t)he
problem is not cells reaching their targets".
The examiner agrees stating in the paragraph bridging pages 9-10 of the Examiner's
Answer:
The examiner has even stated that the disclosed method (example 3 and
onward) shows retention of hematopoietic stem cells in hatchlings injected
at an embryonic stage with stem cells. However, the mere retention of the
cells does not imbue a useful phenotypic change to the bird. Such a
phenotype change does not need to be commercially successful or
therapeutically effective for enablement. However, the method must be
shown to be predictable that the change will benefit the art. This is the
purpose of patents. Inventions that are of no use are not patentable, they
are not enable [sic] as to how to use. This is the status of the instant
invention.
We believe the examiner's position is aptly summarized at page 11 of the
Examiner's Answer where she states "[t]hus as the specification fails to provide
sufficient guidance as to DNA sequences, promoters, and routes of delivery and
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007