Appeal No. 2001-2316 Page 12
Application No. 08/187,879
Appellants, however, fail to point out with any particularity how these references
provide evidence that a skilled artisan, at the time the instant application was
filed, would have been able to carry out, without undue experimentation, the full
scope of the claimed method. For example, appellants fail to explain how these
references relate to the issue of antigenic variability.
We note that appellants agree (Reply Brief, page 11) that the references
cited by the examiner “emphasize problems relating to genetic variability of HIV
antigens and its impact on development of an AIDS vaccine….” However,
appellants argue (id., emphasis added) that the references emphasize the
importance of appellants’ invention, because “[a]ppellants have … demonstrated
that immunization of a mammal by administering to the mammal a DNA
transcription unit comprising a DNA encoding an antigen of SIV, whereby the
mammal was protected at least partially from the manifestations of disease
caused by the SIV, is indeed possible.” In our opinion, however, appellants’
arguments serve to emphasize that the specification does not support the full
scope of the claimed invention, which encompasses a “complete” protective
response against an infection of any SIV or HIV strain.
It is our opinion, that the examiner has set forth a reasonable basis for
finding that the scope of the appealed claims is not enabled by the general
description and prophetic example (example 14) in the specification.
Consequently, the burden of proof was properly shifted to appellants to present
persuasive arguments, supported by suitable proofs where necessary, that
4 McClure, Ann. NY Acad. Sci., Vol. 616, pp. 287-98 (1990). We were unable to locate a copy of
this reference in the administrative file.
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