Appeal No. 2003-2091 Page 8
Application No. 09/266,465
Bcl-2 family member genes . . . would anticipate claims reciting these limitations.” Id.,
pages 6-7.
The facts of this case are not analogous to those of Petering. At issue in
Petering was a claimed chemical compound that had been rejected over a prior art
patent (Karrer). See id. at 995-96, 133 USPQ at 276-77. Karrer disclosed a similar
compound having substituents at various positions that could be, but were not
necessarily, the same as those in the claimed compound. The court concluded that the
generic disclosure did not anticipate Petering’s claims: “Even though appellants’
claimed compounds are encompassed by [Karrer’s] broad generic disclosure, we do not
think this disclosure by itself describes appellants’ invention, as defined by them in any
of the appealed claims, within the meaning of 35 U.S.C. 102(b).” Id. at 1000, 133
USPQ at 279 (emphasis in original).
The court noted, however, that Karrer also described preferred substituents for
each of the variable positions. When the disclosed preferences were taken into
account, the court found that only 20 compounds were within the preferred subgenus
taught by Karrer. See id. at 1000, 133 USPQ at 279-80. The court concluded that “one
skilled in this art would, on reading the Karrer patent, at once envisage each member of
this limited class.” Id. at 1001, 133 USPQ at 280 (emphasis in original).
In the present case, by contrast, Zhang lists at least 57 promoters that could be
used in the disclosed adenoviral vectors. See Tables 2 and 3 in columns 29-30. In
addition, Appellants have asserted (and the examiner has not disputed) that Zhang
discloses nearly 100 different therapeutic agents that could be used. Thus, it would
appear that Zhang discloses a genus of adenoviral vectors comprising nearly 5700
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