Appeal No. 2003-2091 Page 5
Application No. 09/266,465
agreed-upon examiner’s amendment. We therefore affirm the rejection of claims 9-13,
in their current form, under 35 U.S.C. § 112, second paragraph.
2. Anticipation
The examiner rejected claims 1-3, 6, 17-21, 23, 29-32, 34, and 36 as anticipated
by Zhang, reasoning that Zhang “recite[s] an adenoviral expression construct . . .
comprising a nucleic acid (which can be a cDNA or genomic DNA) encoding a Bax gene
product which can be under the control of a CMV IE promoter and polyA signal. . . .
Zhang et al. therefore teaches the claimed invention.” Paper No. 16, mailed October
10, 2001. The examiner specifically cited the disclosure in Zhang’s columns 2, 25, 27-
30, and 38-39.
Appellants argue that Zhang does not describe an adenoviral expression vector
as defined by instant claim 1; i.e., one having a proapoptotic, Bcl-2-family gene under
the control of a non-adenoviral promoter. Rather, they argue, Zhang
describes a method for the production and purification of adenoviral
vectors generally. In describing such vectors, the Zhang patent lists a
great number of potential components that might be included in adenoviral
vectors amenable to the methods claimed by Zhang. There is a large
number of possible therapeutic genes listed, including p53, kinases, CDK-
inhibitors, cell adhesion molecules, numerous enzymes, over a dozen
interleukins, three dozen hormones, tumor suppressor genes, and
inducers of apoptosis – a total of nearly 100 possible genes. Within this
laundry list is found a listing of some Bcl-2 gene family members. The
[Zhang] patent also lists promoters of various sorts, including at least 17
inducible promoters and their inducing compounds.
. . . Although the [Zhang] patent does describe substitution of genes and
promoters, it does not illustrate the particular combination presently
claimed.
Appeal Brief, page 7. Thus, Appellants argue, in order to derive the claimed product
from Zhang’s disclosure,
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