Appeal 2007-2542
Application 10/623,891
no predictability or reasonable expectation of success in repeating the
process of Witter ‘97 as suggested by the Examiner” (Appeal Br. 12).
We have considered this evidence, but do not find it persuasive. As
noted by the Examiner (Answer 12), claim 1 does not require the
recombinant MDV to show “enhanced replication.” Thus, Appellants are
distinguishing the prior art by a feature which is not present in claim 1.
There is also no evidence that all agents within the scope of claim 1 would
possess such property. In sum, we do not find Appellants’ post-filing
evidence persuasive because the feature which Appellants allege to be
unpredictable is not found in claim 1.
For the foregoing reasons, we affirm the rejection of claim 1. Claims
2, 5-9, and 12-15, fall with claim 1 because they were not separately argued.
See 37 C.F.R. 41.37(c)(1)(vii).
Claims 3 and 10
Claim 1 is directed to a viral agent comprising a recombinant MDV
which contains an LTR of REV. Claim 3, which is dependent on claim 1,
specifies the origin of the LTR as being a Pac I fragment of ATCC PTA-
4945.
Appellants assert that the even “if the prior art did suggest inserting an
LTR from a reticuloendotheliosis virus into a Marek’s Disease virus as
proposed by the Examiner (a point which is not conceded by appellants for
the reasons noted), the prior art certainly provides no teaching whatsoever
how that should be done” (Appeal Br. 14).
We do not find this argument persuasive. “The obviousness analysis
cannot be confined by a formalistic conception of the words teaching,
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