Appeal No. 2001-2316 Page 3
Application No. 08/187,879
Weiss, “Genetic vaccine keeps chimps protected against AIDS virus,” The
Washington Post, p. A2 (April 30, 1997)
Cohen et al. (Cohen), “HIV/AIDS in 1998 – gaining the upper hand?,” JAMA, Vol.
280, No. 1, pp. 87-88 (1998)
GROUND OF REJECTION
Claims 44-46, 50, 51 and 81-89 stand rejected under 35 U.S.C. § 112, first
paragraph, as being based on an insufficient disclosure to support or enable the
full scope of the claimed invention.
We affirm.
CLAIM GROUPING
According to appellants (Brief, page 4), claims 44-46, 50, 51 and 81-89
stand or fall together. Accordingly, we limit our discussion to representative
independent claim 44. Claims 45, 46, 50, 51 and 81-89 will stand or fall together
with claim 44. 37 CFR § 1.192(c)(7).
DISCUSSION
According to the examiner (Answer, page 8), appellants’ specification is
enabling only for claims directed to:
(I) A method of reducing SIV [simian immunodeficiency virus]
infected cells in a mammal2, the method comprising
administering to said mammal multiple administrations of a
mixture of DNA plasmid vectors: pSIV239.dpol,
SIV239.sgp130, SIV251.sgp130, SIV316.sgp130 and
2 In the event of further prosecution, we encourage the examiner to reconsider the record to
determine if, in fact, the evidence of record will support a claim to a method of reducing SIV or
HIV infected cells in a mammal. As we understand the record, the evidence demonstrates a
reduction in “viral loads,” not “infected cells.” See, Robinson Declaration, page 3, “viral loads
were reduced to the chronic level over a shorter period of time in the vaccinated animals…, than
the control animals.” If, on reflection, the examiner finds that the evidence is directed to reducing
viral loads and not infected cells, we encourage the examiner to clarify the record as to whether
such a method would meet the statutory requirements of 35 U.S.C. § 101. See e.g., Brief, page
8, wherein appellants argue, “a method of reducing viral load clearly presents a substantial
utility.”
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