Ex parte Cook

Board of Patent Appeals and Interferences

Jul 27, 1999

07833146 (B.P.A.I. Jul. 27, 1999)

Application for patent filed February 10, 1992.1
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte ALAN F. COOK
________________
Appeal No. 95-4435
Application No. 07/833,1461
________________
ON BRIEF
________________
Before WINTERS, WILLIAM F. SMITH and LORIN, Administrative
Patent Judges.
WINTERS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal was taken from the examiner's decision
rejecting claims 3 through 7, 10 through 14, 22 and 23.
Claims 15 through 21, which are the only other claims
Appeal No. 95-4435
Application No. 07/833,146
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remaining in the application, stand withdrawn from further
consideration by the examiner as directed to a non-elected
invention.
Claim 22, which is illustrative of the subject matter on
appeal, reads as follows:
22. An oligonucleotide wherein at least one nucleotide unit
of said olignonucleotide [sic, oligonucleotide] includes a
phosphate moiety having the following structural formula:
*
O
*
O = P - O -
*
(Y)n
*
A - CH - M , wherein n is O or 1; and- +
Y is:
(Z) -R , wherein R is a hydrocarbon, p is O or 1, and Z isp 1 1
oxygen, sulfur, or NR , wherein R is hydrogen or a2 2
hydrocarbon; M is:+
R3
*
N - R+ 4
*
R5
wherein each of R , R , and R is hydrogen or a3 4 5
hydrocarbon, and each of R , R , and R may be the same or3 4 5
different, and A- is selected from the group consisting of
COO-, SO , and PO .- 2-3 3
As stated in the Examiner's Answer, page 2, sections (7)
and (8), the examiner does not rely on any prior art of
Appeal No. 95-4435
Application No. 07/833,146
The record copy of the Examiner's Answer is not2
paginated. For the sake of convenience, we have numbered the
pages running from 1 through 8.
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record, nor does the examiner cite or rely on new prior art,
in rejecting the claims on appeal.2
The issue presented for review is whether the examiner
erred in rejecting claims 3 through 7, 10 through 14, 22 and
23 under 35 U.S.C. § 112, first paragraph, as based on a non-
enabling disclosure.
DISCUSSION
We shall not sustain this rejection.
We have carefully considered the position of the
examiner, as set forth in the Examiner's Answer, but find that
such is based on clearly erroneous fact-finding. For example,
the examiner states that "[w]hen, as in this case, the only
utility in the specification is in the treatment of humans,
the claimed compounds are held to the same standard of
enablement as said method of treatment claims" (Examiner's
Answer, page 5, first paragraph of section (10) Response to
Arguments, emphasis added). Compare the following statement
in the specification, page 7, lines 1 through 6:
Appeal No. 95-4435
Application No. 07/833,146
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The oligonucleotides may be used in vitro or in
vivo for modifying the phenotype of cells, or for
limiting the proliferation of pathogens such as
viruses, bacteria, protists, Mycoplasma species,
Chlamydia or the like, or for inducing morbidity in
neoplastic cells or specific classes of normal
cells.
Manifestly, the specification describes in vitro utilities,
contrary to the examiner's characterization. Where, as here,
a legal conclusion of non-enablement is based on clearly
erroneous fact-finding, the legal conclusion cannot stand.
Furthermore, the Examiner's Answer is internally
inconsistent and procedurally flawed. In the Answer, page 2,
sections (7) and (8), the examiner states that no prior art of
record is relied on, nor is any new prior art cited or relied
on in rejecting the appealed claims. Nevertheless, in the
Examiner's Answer, paragraph bridging pages 6 and 7, and in
the first full paragraph of page 7, the examiner makes
reference to the "Ulhmann et al." publication. In the
Examiner's Answer, the examiner does not provide a citation
for "Ulhmann et al.," nor is it clear from the record just
what this publication is. Apparently, the examiner does rely
on it. This, in and of itself, constitutes reversible error.
Appeal No. 95-4435
Application No. 07/833,146
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Finally, appellants rely on seven publications cited and
submitted with the Information Disclosure Statement
accompanying their Appeal Brief. In the Examiner's Answer,
page 7, first full paragraph, the examiner states that these
publications have been "fully considered." Nevertheless, in
the communication mailed July 22, 1996 (Paper No. 22), the
examiner states that "[t]he references listed on the
Information Disclosure Statement filed August 5, 1994 along
with the Brief have not been considered" (emphasis added).
Again, the examiner's position is inconsistent and
procedurally flawed.
The examiner's decision is reversed.
REVERSED
SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
)
)
WILLIAM F. SMITH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
HUBERT C. LORIN )
Appeal No. 95-4435
Application No. 07/833,146
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Administrative Patent Judge )
clm
Appeal No. 95-4435
Application No. 07/833,146
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Raymond J. Lillie
Carella, Byrne, Bain & Gilfillan
6 Becker Farm Rd.
Roseland, NJ 07068