Appeal No. 2006-0735
Reexamination Control No. 90/006,036
Claims 5 and 11, which depend from claims that were amended during prosecution, have
been rejected by the examiner under 35 U.S.C. 112, ¶ 1. We REVERSE this rejection.
However, we enter a NEW GROUND OF REJECTION for amended claims 6, 9, and 11.
II. Findings of fact
The record supports the following findings of fact by at least a preponderance of the
evidence.
1. The 5,854,038 patent (‘038), issued on 29 December 1998 from application 08/325,362
(‘362), filed 14 October 1994.
2. ‘362 is said to be a continuation of application 07/077,745, filed 22 January 1993. (‘038,
1:1-5).
3. The claims of the ‘038 patent that are the subject of the reexamination are directed to a
method for enhancing the effect of a viral therapeutic agent in a cell in vitro and the
therapeutic agent used in the method.
The patent claims
4. The patentee concedes that claims 1-4, 6-10, 12, and 13, all of which are rejected over prior
art, stand or fall together. (Brief at 6).
5. The patentee concedes that claims 5 and 11, rejected for failure to comply with the written
description requirement of 35 U.S.C., §112, ¶ 1, stand or fall together. (Brief at 6).
6. We find claim 1, reproduced below, to be representative of the claims:
A method for enhancing the effect of a viral therapeutic agent in a cell in
vitro on the viral target of said agent, wherein the viral therapeutic agent is a
nucleic acid, comprising the step of:
2
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