Appeal No. 2003-1126 Page 4
Application No. 08/444,285
the full scope of the claimed subject matter. After careful review of the record
and consideration of the issues before us, we affirm the obviousness-type double
patenting rejection, but reverse the rejection under 35 U.S.C. § 112, first
paragraph.
DISCUSSION
1. Rejection for Obviousness-type Double Patenting
Claims 39, 41, 43, 45, 50, 51, 55-79, 82, 83, 86-114, 116 and 119 stand
rejected under the judicially created doctrine of obviousness-type double
patenting as being unpatentable over claims 1-17 of U.S. Patent No. 4,873,191.
According to the rejection, “the nonhuman transgenic mammal and
methods of producing a polypeptide or protein using the mammal of claims 39,
41, 43, 45, 50, 51, 55-79, 82, 83, 86-114, 116 and 119 are obvious over claims 1-
7 of the ’191 as the mammal of the claims is made by the method of [sic] claimed
in ’191.” Examiner’s Answer, page 3.
Appellants state that they intend to file a terminal disclaimer upon the
indication of allowable subject matter. As appellants do not argue the rejection
and as a terminal disclaimer has not been filed, this rejection is affirmed.
2. Rejection under 35 U.S.C. § 112, first paragraph
Claims 39, 41, 43, 45, 50, 51, 55-79, 82, 86-114, 116 and 119 stand
rejected under 35 U.S.C. § 112, first paragraph. According to the rejection,
the specification, while being enabling for a transgenic mouse
whose somatic and germ cells contain a DNA sequence encoding a
protein of interest under the control of a transcriptional control
sequence and methods of using the mouse to produce the protein
in its blood and isolating the protein from the blood, does not
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