Appeal No. 2003-2091 Page 4
Application No. 09/266,465
Discussion
Claim 1, the broadest claim on appeal, is directed to an adenoviral vector
comprising a nucleic acid encoding one of the proapoptotic members of the Bcl-2 gene
family, under the control of a non-adenoviral inducible promoter.
The examiner rejected most of the claims as either anticipated by Zhang or
obvious in view of Zhang and other prior art. The examiner rejected claims 9-13 as
indefinite.
1. Definiteness
The examiner rejected claim 9 (and claims 10-13 because of their dependence
on claim 9) as indefinite. Claim 9 depends on claim 3 which, in turn, depends on claim
1 and adds the limitation that the vector “compris[es] a second nucleic acid encoding a
second transgene.” Claim 9 adds to claim 3 the limitation that “said second gene
encodes a protein selected from the group consisting of a tumor suppressor,” etc.
The examiner concluded that claim 9 is indefinite because “there is no
antecedent basis for the term ‘said second gene.’” Paper No. 21, mailed June 21, 2002,
page 10. In response, Appellants have authorized the examiner to enter an examiner’s
amendment that would change claim 9 to recite “said second transgene”, thereby
overcoming the rejection. Appeal Brief, page 14. The examiner has indicated, as we
understand it, that he would enter such an examiner’s amendment, which would
overcome the rejection. Examiner’s Answer, page 9.
Thus, the examiner and Appellants apparently agree that claims 9-13 are
indefinite as they currently stand, but that the indefiniteness can be cured via the
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