Ex parte Roizman et al.

Board of Patent Appeals and Interferences

Apr 25, 2000

08176320 (B.P.A.I. Apr. 25, 2000)

Notwithstanding entry authorization by the examiner (see answer, page 3), appellants’ request to cancel1
claim 23 (see brief, page 1) has not been physically entered in the file record. This clerical processing oversight
should be corrected upon return of the above identified application to the jurisdiction of the examiner.
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not binding precedent of the Board.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. 40
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte BERNARD ROIZMAN and FENYONG LIU
____________
Appeal No. 1996-2639
Application No. 08/176,320
____________
ON BRIEF
____________
Before WILLIAM F. SMITH, ROBINSON, and SPIEGEL, Administrative Patent Judges.
SPIEGEL, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the examiner's final rejection of claims
6 through 13, 22, 43, 58, 63 and 66 through 71, which are all of the claims pending in this application. 1
Initially, we note that the examiner entered three new grounds of rejection, i..e, (1) of claims 58
and 63 under 35 U.S.C. § 102 as anticipated by or, in the alternative, under 35 U.S.C.
Appeal No. 1996-2639
Application No. 08/176,320
On March 31, 2000, Gloria Henderson, paralegal with the Board of Patent Appeals and Interferences,2
spoke on the telephone with Steven L. Highlander, Reg. No. 37,642, counsel for appellants. In that telephone
conversation, counsel indicated that no reply brief was filed in response to the new grounds of rejection and that
those claims will probably be dropped.
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§ 103 as obvious over Holland, (2) of claim 8 under 35 U.S.C. § 112, second paragraph, as indefinite
and (3) of claims 7 and 8 under 35 U.S.C. § 112, fourth paragraph, as failing to further the subject
matter of a previous claim, i.e., claim 6 (answer, pages 6-9, section (10) entitled “New grounds of
rejection”). In the answer, page 16, the examiner states as follows:
In view of the new ground of rejection, appellant is given a period of TWO
MONTHS from the mailing date of this examiner’s answer within which to file a reply
to any new ground of rejection. Such reply may include any amendment or material
appropriate to the new ground of rejection. Prosecution otherwise remains closed.
Failure to respond to the new ground of rejection will result in dismissal of the appeal of
the claims so rejected.

Appellants failed to respond to the new grounds of rejection and, accordingly, the appeal with respect
to claims 7, 8, 58 and 63 is dismissed. Thus, claims 6, 9 through 13, 22, 43 and 66 through 71 are2
the only claims remaining on appeal.
Claims 6 and 13 are illustrative of the subject matter on appeal and read as follows:
6. An isolated and purified nucleic acid molecule comprising a fragment
consisting of a sequence encoding a herpes simplex 1 protease, said molecule being
engineered through the introduction of one or more genetic control elements to control
the expression of said coding sequence, wherein said control element is one that does
not normally control expression of the herpes virus protease in the herpes virus genome.
13. The nucleic acid molecule of claim 6 comprising a map region essentially as
set forth in Figure 1, line 5 or line 6.
Appeal No. 1996-2639
Application No. 08/176,320
According to the advisory action mailed March 28, 1995 (Paper No. 29), the response filed March 13, 19953
(Paper No. 28) overcame the final provisional rejection of claims 23, 58 and 63 under 35 U.S.C. § 101 double patenting
over claims 71-75 of copending application no. 07/832,855.
The examiner withdrew (i) the final rejection of claims 67-69 under 35 U.S.C. § 112, first paragraph, as based
on a non-enabling disclosure and (ii) the final provisional rejection of claims 6-13, 22, 43 and 66-71 under the
judicially created doctrine of obviousness-type double patenting over claims 31, 32, 35-38 and 71-75 of copending
application no. 07/832,855 in the answer (page 4).
Moreover, in that the final rejections (1) of claim 13 under 35 U.S.C. § 112, second paragraph, as indefinite
and (2) of claims 23, 58 and 63 (now claims 58 and 63) under 35 U.S.C. § 102 as anticipated by Holland are not
repeated in the answer, they are presumed to have been withdrawn. Ex parte Emm, 118 USPQ 180, 181 (Bd. App.
1957).
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The examiner relies on the following references of record:
Bruce Alberts et al. (Alberts), MOLECULAR BIOLOGY OF THE CELL 98-103 (Garland
Publishing, Inc. New York, New York 1983) .
Louis E. Holland et al. (Holland), “Transcriptional and Genetic Analyses of the Herpes Simplex
Virus Type 1 Genome: Coordinates 0.29 to 0.45,” 49 Journal of Virology 3, 947-959 (March 1984).
D.J. McGeoch et al. (McGeoch), “The Complete DNA Sequence of the Long Unique Region
in the Genome of Herpes Simplex Virus Type 1,” 69 Journal of General Virology 1531-1574
(1988).
Benjamin Lewin (Lewin), GENES 41-60 (3d ed., New York, John Wiley & Sons, 1987).
J. Sambrook et al. (Sambrook), MOLECULAR CLONING: A LABORATORY MANUAL 16.1-
16.31, F.1-F.11 (2nd ed., Cold Spring Harbor laboratory Press 1989).
Lubert Stryer (Stryer), BIOCHEMISTRY 71-82 (3d ed., New York, W. H. Freeman and
Company 1988).
ISSUES3
Appeal No. 1996-2639
Application No. 08/176,320
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The sole issue remaining on appeal is whether the examiner erred in rejecting claims 6, 9-13,
22, 43 and 66-71 under 35 U.S.C. § 103 as unpatentable over McGeoch in view of Sambrook. We
reverse.
Appellants’ claimed invention is directed to isolated and purified nucleic acid sequences
encoding for a herpes simplex virus type 1 (HSV-1) protease.
OPINION
McGeoch discloses the DNA sequence of the long unique region (U ) in the genome of HSV-1L
strain 17 (abstract; Figs. 1-3), which included 57 identified open reading frames (page 1535).
Sambrook describes methods of expressing cloned genes in cultured mammalian cells. According to
the examiner, it would have been obvious to one of ordinary skill in the art to have cloned the U 26L
region described by McGeoch using the methods of Sambrook to further study and characterize the
function of this protein (answer, page 6). However, the examiner has failed to point out, and we do not
find, where McGeoch discloses or suggests that the U 26 region, or any other region of the disclosedL
HSV-1 U sequence for that matter, encodes a protease. See In re Kratz, 592 F.2d 1169, 1175, 201L
Appeal No. 1996-2639
Application No. 08/176,320
Application No. 08/176,320, filed January 3, 1994, is a continuation of application no. 07/705,814, filed May4
24, 1991, now abandoned. U.S. Patent 5,478,727, issued from application no. 07/832,855 which (a) was a continuation-
in-part of application no. 07/705,814 and (b) was the same application which was the basis for the withdrawn
provisional double patenting rejections noted above.
Claim 1 in issued U.S. Patent 5,478,787 reads as follows:5
1. An assay method to identify a substance capable of inhibiting a herpes virus protease
comprising:
(a) obtaining a purified HSV protease encoded by at least domains II and III of U 26 gene;L
(b) adding to said protease a protein substrate containing the cleavage site of said protease under
conditions appropriate to effect proteolytic cleavage of said substrate;
(c) adding to said protease a candidate inhibitor substance; and
(d) determining whether said protein substrate has been cleaved.
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USPQ 71, 76 (CCPA 1979) . Indeed, in allowing related application no. 07/832,855, this same4
examiner stated in her reasons for allowance that
Applicants have shown that the HSV U 26 open reading frame encodes aL
protease; the biological activity and function of this protein was not previously known in
the art. The newly submitted claims (amendment of 7/3/95) are drawn to an assay to
identify agents that inhibit the HSV protease. The amendment overcomes the previous
art rejections because, in order to assay for an enzyme-inhibiting agent, one would need
to know the enzyme exists. This was not known in the art at the time the invention was
made. The claims are thus deemed to be novel and unobvious. [Notice of Allowability,
Paper No. 26, mailed July 10, 1995, in application no. 07/832,855, now U.S. Patent
No. 5,478,727, issued Dec. 26, 1995, copy attached to this decision.]
It appears incongruous for the same examiner to allow claims which require “a purified HSV protease
encoded by at least domains II and III of U 26 gene” because it was not even known that HSVL 5
possessed a viral protease and to maintain that it would have been obvious to clone a nucleic acid
sequence for an enzyme not previously known to exist. Therefore, although it may have been within
ordinary skill in the art to ligate the U 26 open reading frame sequence of McGeoch into a cloningL
Appeal No. 1996-2639
Application No. 08/176,320
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vector of choice, insert the vector into a host cell of choice, and express the protein, neither McGeoch
nor Sambrook provide any basis for selecting the U 26 open reading frame sequence and using it toL
express a protease. Accordingly, we reverse the rejection of claims 6, 9-13, 22, 43 and 66-71 as
obvious over McGeoch in view of Sambrook.
CONCLUSION
To summarize, the decision of the examiner to reject claims 6, 9-13, 22, 43 and 66-71 under
35 U.S.C. § 103 as unpatentable over McGeoch in view of Sambrook is reversed.
REVERSED
WILLIAM F. SMITH )
Administrative Patent Judge )
)
)
Appeal No. 1996-2639
Application No. 08/176,320
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)
) BOARD OF PATENT
DOUGLAS W. ROBINSON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CAROL A. SPIEGEL )
Administrative Patent Judge )
Appeal No. 1996-2639
Application No. 08/176,320
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THOMAS E. NORTHROP
ARNOLD, WHITE & DURKEE
P.O. BOX 4433
HOUSTON, TX 77210
Appeal No. 1996-2639
Application No. 08/176,320
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CAS/dal