Appeal No. 2006-0735
Reexamination Control No. 90/006,036
The examiner next argues that because there is no working example of a protein
localization signal tethered to a nucleic acid therapeutic agent, there is insufficient written
description as to claims 5 and 11. However, the absence of a working example is not
fatal to written description where, as here, the specification otherwise conveys to one
skilled in the art that the applicant’s possessed the claimed invention at the time of
filing.2
We determine that the examiner has not set forth a prima facie showing that
claims 5 and 11 are not adequately described as required by 35 U.S.C. § 112, ¶ 1. We
REVERSE the examiner’s rejection of these claims.
New Ground of Rejection
In accordance with 37 CFR 41.50(b), we enter a new ground of rejection and
reject claims 6, 9, and 11 under 35 U.S.C. § 112, ¶ 2 for failing to particularly point out
and distinctly claim the subject matter of the invention.
Claims 6, 9 and 11, are reproduced below.
6. A viral therapeutic agent comprising at least one localization signal
able to localize said agent in the same cellular or viral compartment with a
viral target of said therapeutic agent in a cell in vitro, wherein the viral
therapeutic agent is a nucleic acid.
9. A therapeutic agent comprising a localization signal, wherein the
therapeutic agent is a nucleic acid and wherein said localization signal is
capable of localizing said therapeutic agent in the same cellular
compartment as the target molecule of said therapeutic agent in a cell in
vitro.
11. The therapeutic agent of any of claims 6 or 9, wherein said
localization signal comprises a protein component.
2 Whether a working example is present is a factor that may be considered
in determining whether undue experimentation is required to practice the invention. See
In re Wands, 858 F.2d 731, 736, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
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