Appeal No. 2006-1879 Page 9
Application No. 10/010,114
The examiner has stated that the in vitro embodiments encompassed by the
claims are enabled, and has not disputed the accuracy of the specification’s in vivo
working examples. There seems to be no dispute, therefore, that the claimed method
results in the transfer and expression of nucleic acids in targeted cells. We cannot
agree that such a result must provide a therapeutic effect in order to be useful.
A method that overcomes some of the problems plaguing the field of gene
therapy would seem to be a useful advance, even if the advance is incremental and
does not resolve all of the problems facing the field. Such a method is useful to those
skilled in the art even if it is not sufficient, by itself, to allow immediate practice of gene
therapy. A method that enhances the efficiency of transfer of nucleic acids to cells in
vivo, as the present method is said to do, provides a valid research tool that those
skilled in the art could use in carrying out experiments involving transferring nucleic
acids to cells in vivo.
The present claims are different from, for example, the invention at issue in In re
Fisher, 421 F.3d 1365, 76 USPQ2d 1225 (Fed. Cir. 2005). The applicant in that case
claimed expressed sequence tags (ESTs) from genes of unknown function. See id. at
1370, 76 USPQ2d 1231. The court concluded that “the claimed ESTs act as no more
than research intermediates that may help scientists to isolate the particular underlying
protein-encoding genes and conduct further experimentation on those genes. . . .
Accordingly, the claimed ESTs are . . . mere ‘object[s] of use-testing,’ to wit, objects
upon which scientific research could be performed with no assurance that anything
useful will be discovered in the end.” Id. at 1373, 76 USPQ2d 1231.
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007