Appeal No. 2001-0490 Page 5
Application No. 08/524,206
confined to the factual record compiled by the board … the ‘substantial evidence’
standard is appropriate for our review of board fact findings, see 5 U.S.C.
§ 706(2)(E).”). See also In re Lee, 277 F.3d 1338, 61 USPQ2d 1430 (Fed. Cir.
2002) (a board decision denying patent must be founded on necessary findings
and must provide an administrative record showing the evidence which the
findings are based; the board must assure the requisite findings are made, based
on evidence of record).
On a different tack the examiner finds (Answer, page 8), the “[e]fficiency of
liposome-mediated transfection is strongly dependent on the lipid composition,
and some lipid mixtures give little or no transfection (Hug et al., p. 7; Mannino et
al., p. 687)” apparently suggesting that the claimed invention be limited to the
precise liposome described in appellants’ specification. See Specification, pages
12-18. However, as appellants point out (Reply Brief, pages 8-9), “[i]n addition to
HVJ liposomes, which are described in detail in the Examples, the specification
states that other well known DNA delivery methods can be used in the methods
of the invention.” The examiner does not address these “other well known DNA
delivery methods.” We remind the examiner, it is not a function of the claims to
specifically exclude all possible inoperative embodiments. As set forth in Atlas
Powder Co. v. E.I. DuPont De Nemours & Co., 750 F.2d 1569, 1576-77, 224
USPQ 409, 414 (Fed. Cir. 1984):
Even if some of the claimed combinations were inoperative, the
claims are not necessarily invalid. “It is not a function of the claims
to specifically exclude ... possible inoperative substances....” In re
Dinh-Nguyen, 492 F.2d 856, 859-59, 181 USPQ 46, 48 (CCPA
1974)(emphasis omitted). Accord, In re Geerdes, 491 F.2d 1260,
1265, 180 USPQ 789, 793 (CCPA 1974); In re Anderson, 471 F.2d
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