Appeal No. 2003-1594 Page 3
Application No. 08/970,266
rejected under 35 U.S.C. § 102(b) as being anticipated by Hollis. Finally, claims
10-25 stand rejected under 35 U.S.C. § 103 as being rendered obvious by the
combination of Fell A or Fell B as combined with Yamawaki-Kataoka. After
careful review of the record and consideration of the issues before us, we
reverse all of the rejections of record. Note that in deciding this appeal, we have
also considered the issues in related Appeal No. 2003-0847, Application No.
08/744,685.
DISCUSSION
1. 35 U.S.C. § 112, first paragraph (New Matter)
Claim 13 stands rejected under 35 U.S.C. § 112, first paragraph, as
containing subject matter that was not described in the specification in such a
way as to reasonably convey to one skilled in the relevant art that the inventors,
at the time of filing, had possession of the claimed invention.
The rejection objects to the reference to the selectable markers xanthene-
guanine phosphoribosylttransferase (gpt) and dihydrofolate reductase (dhfr).1
According to the rejection:
The specification only provides adequate written description for the
specifically recited list of recombinant vectors named pMC1neo,
pXT1, pSG5, EBO-pSV2-neo, pBPV-1(8-2), pdBPV-MMT-neo,
pRSVgpt, pRSVneo, pSV2-dhfr, pUCtag, and IZD35, and does not
indicate that it was intended that (1) these vectors encode neo, dhfr
or any antibiotic resistance in general or even if these vectors do,
that (2) the coding regions for genes comprising neo, dhfr, or
1 The rejection as set forth in the Answer also objects to the selectable marker of
“antibiotic resistance.” That phrase was canceled in the Amendment of 4/12/01,
however, and thus our analysis does not extend to the rejection as it relates to
that selectable marker.
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