Appeal No. 2003-0847 Page 5
Application No. 08/744,685
inventor was in possession of the invention. See Purdue Pharma L.P. v.
Faulding, Inc., 230 F.3d 1320, 1323, 56 USPQ2d 1481, 1483 (Fed. Cir. 2000).
We find that the disclosure as filed conveys to the skilled artisan that
appellants were in possession of the claimed invention, i.e., the use of the gpt
and dhfr as selectable markers in vectors other than those specifically listed in
the specification. The disclosure as filed teaches the general use of selectable
markers, and also discloses the use of the gpt and dhfr markers, albeit in
specifically exemplified vectors.
2. 35 U.S.C. § 112, First Paragraph (Enablement)
Claims 6, 15-17, 19, 21-27 and 29-35 stand rejected under 35 U.S.C.
§ 112, first paragraph, as the disclosure fails to enable one skilled in the art to
make and/or use the full scope of the claimed invention.
According to the rejection as it is set forth in Paper No. 17,
the specification, while being enabling for a homologous
recombination insertional expression vector for the expression of a
murine immunoglobulin gamma 2A polynucleotide in NS/O cells
wherein said vector comprises said polynucleotide in said cell and
murine immunoglobulin gamma 2A locus specific DNA sequences
for targeting, a transcription unit encoding a selectable marker, an
origin of replication, and a CMV-IEp promoter, does not reasonably
provide enablement for a homologous recombination insertional
expression vector for the expression of any recombinant gene in
any mammalian cells wherein said vector comprises said gene in
said cell and any immunoglobulin gamma 2A locus-specific DNA
sequences for targeting and a transcription unit encoding any
selectable marker. The specification does not enable any person
skilled in the art to which it pertains, or with which it is most nearly
connected, to make and use the invention commensurate in scope
with these claims.
Paper No. 17, page 8.
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007