Appeal No. 2001-0869 Page 10
Application No. 08/453,347
provide evidence that those practicing gene therapy techniques would not have
considered the obstacles cited by the examiner to be a barrier to applying gene
therapy in human patients, and therefore, that those obstacles would not have
been considered to be a source of undue experimentation in this field. There is
no evidence in the record that the claimed gene therapy methods would have
been likely to involve excessive experimentation when considered relative to
other methods practiced in the field of gene therapy.
Thus, we conclude that the examiner has not shown that the amount of
experimentation required to practice the instant claims would have been
considered undue by those skilled in the art of gene therapy. The rejection for
nonenablement is reversed.
New Ground of Rejection
Under the provisions of 37 CFR § 1.196(b), we make the following new
ground of rejection: claims 1-3 and 7-16 are rejected under the equitable
doctrine of interference estoppel.
The doctrine of interference estoppel “bar[s] the assertion of claims for
inventions that are patentably indistinct from those in an interference that the
applicant had lost.” In re Deckler, 977 F.2d 1449, 1452, 24 USPQ2d 1448, 1449
(Fed. Cir. 1992). See also 37 CFR § 1.658(c).3
3 “A judgment in an interference settles all issues which (1) were raised and decided in the
interference, (2) could have been properly raised and decided in the interference by a motion
under § 1.633 (a) through (d) and (f) through (j) or § 1.634, and (3) could have been properly
raised and decided in an additional interference with a motion under § 1.633(e). A losing party
who could have properly moved, but failed to move, under § 1.633 or 1.634, shall be estopped to
take ex parte or inter partes action in the Patent and Trademark Office after the interference
which is inconsistent with that party’s failure to properly move, except that a losing party shall not
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