Appeal No. 2006-0735
Reexamination Control No. 90/006,036
Claims 6 and 9 limit the therapeutic agent, and thereby the localization signal
which is part of the therapeutic agent, to a nucleic acid. However, claim 11 requires that
the localization signal comprise a protein component. It is not clear if claims 6 and 9 are
incorrect in limiting the localization signal to a nucleic acid or if claim 11 is incorrect is
requiring the localization signal to be something that it may not be according to the
claims from which it depends. See Scripps Res. Instit. V. Nemensen, 78 USPQ2d 1019,
1035 (BPAI 2005) (both parent and dependent claims are indefinite if it is not appaent
which contains the mistake). At any rate, all or claims 6, 9, and 11 lack sufficient
definiteness and are rejected under 35 U.S.C. § 112, ¶ 2.
IV. Conclusion
Upon consideration of the record and for reasons given, it is
ORDERED that the examiner’s rejection of claims 1-4, 6-10, 12, and 13
under 35 U.S.C. § 102(e) as being anticipated by U.S. Patent 6,107,062 to Hu et al. is
AFFIRMED;
FURTHER ORDERED that the examiner’s rejection of claims 1-4, 6-10,
12, and 13 under 35 U.S.C. § 102(b) as being anticipated by a reference to “Dropulic, B.,
et al., 1991" that is described by the examiner as “Abstracts of papers presented at the
1991 meeting on RNA TUMOR VIRUSES, Cold Spring Harbor Laboratory, Cold
Spring Harbor, New York is REVERSED;
FURTHER ORDERED that the examiner’s rejection of claims 5 and 11
under 35 U.S.C. §112, ¶1, is REVERSED; and
FURTHER ORDERED that, in accordance with 37 CFR 41.50(b), we
enter a new grounds of rejection and reject claims 6, 9, and 11 under 35 U.S.C. § 112, ¶ 2
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