Appeal No. 2006-0735
Reexamination Control No. 90/006,036
In this regard, patentee states that the Hu construct would not contain HIV-1
packaging signal because the Hu construct is designed to target mRNAs that are
transported to the cell’s cytoplasm for translation. (Brief at 8-11). Patentee does not
provide any objective support for this statement and therefore, it amounts to nothing more
than attorney argument. Attorney argument alone is not sufficient to overcome
patentee’s burden in rebutting the examiner’s showing of anticipation based on
inherency. Cf. Vivid Tech., Inc. v. American Sci. & Eng'g, Inc., 200 F.3d 795,812, 53
USPQ2d 1289, 1301 (Fed. Cir. 1999).
Moreover, even if the Hu construct lacks HIV-1 packaging signal, there is no
dispute that the construct is effective at locating the therapeutic agent, i.e., the antisense
or antisense/ribozyme, into the cytoplasm of the cell. (Brief at 8). Given that we must
give the claim term “compartment” its broadest, reasonable interpretation in view of the
specification, we conclude that localizing the therapeutic agent in the cytoplasm meets
the claim limitation of localizing the agent to a “cellular or viral compartment of said
cell.” While the patentee’s specification gives an example of a viral particle as a small
compartment compared to the cellular nucleus, , the patentee has not pointed out where
the specification limits or otherwise defines “a cellular compartment” as excluding the
cytoplasm.
The patentee further argues that the example describing the construction of the
antisense fragments in the Hu reference does not show the association of the antisense
sequence with any type of localization or other signal. (Brief at 11-13). Patentee directs
us to that portion of Hu showing how to construct the antisense portion of the construct
(“[b]elow is a description of a region of the tat gene being turned antisense” (Hu at 14:15-
13
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