Appeal No. 2001-1293 Page 4
Application No. 08/464,271
Discussion
The claims stand or fall together. Appeal Brief, page 6. We will consider
independent claim 44 as representative of the claimed method. The remaining
claims will stand or fall with claim 44.1
Claim 44 is directed to a method for killing cells of a particular tissue-type
or cell line in an organism, where the targeted cells comprise endogenous
thymidine kinase and exogenous DNA, linked to a tissue-specific promoter,
encoding an enzyme that converts a latent toxin to a cell toxin. The only
manipulative step recited in claim 44 is that of “administering to said organism an
amount of said latent toxin effective to trigger generation of said cell toxin by
enzymatic conversion of the latent toxin; thereby inhibiting growth or causing
death of at least a substantial portion of said tissue-type or cell line.”
The examiner rejected the claims as nonenabled, on the basis that the
specification “does not reasonably provide enablement for a method of
selectively inhibiting the growth or causing death of all tissue types in any and all
intact organisms comprising producing all transgenic organisms comprising DNA
encoding and expressing any and all exogenous enzymes that selectively
convert a latent toxin into a cell toxin, wherein said DNA is operatively linked to a
promoter specific for any and all tissue types.” Examiner’s Answer, page 4.2 The
examiner thus concluded that the claims were overly broad with respect to the
1 We will, however, consider claims 40 and 41 separately, for reasons that are explained infra.
2 The examiner also concluded that the specification does not “enable methods of selectively
inhibiting the growth or causing death of all tissue types in any and all intact organisms
comprising using any and all methods of gene therapy.” Id. For reasons that will become clear,
we need address this basis of the rejection only with regard to claims 40 and 41.
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