Wright, In re, No. 92-1437

• Decision Date: 20 July 1993
• Docket Number: No. 92-1437
• Citation: 27 USPQ2d 1510,999 F.2d 1557
• Parties: In re Stephen E. WRIGHT.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1557

999 F.2d 1557

27 U.S.P.Q.2d 1510

In re Stephen E. WRIGHT.

No. 92-1437.

United States Court of Appeals, Federal Circuit.

July 20, 1993.

Peter M. Peer, Mallinckrodt & Mallinckrodt, Salt Lake City, UT, argued for appellants. With him on the brief was Philip A. Mallinckrodt.

Teddy S. Gron, Associate Sol., Office of the Sol., Arlington, VA, argued for appellee. With him on the brief was Fred E. McKelvey, Sol. Of counsel were Richard E. Schafer, John W. Dewhirst, Albin F. Drost and Lee E. Barrett.

Before RICH, NEWMAN, and RADER, Circuit Judges.

RICH, Circuit Judge.

Dr. Stephen E. Wright appeals from the January 16, 1992 decision of the Board of Patent Appeals and Interferences (Board) of the United States Patent and Trademark Office (PTO) sustaining the Examiner's rejection of claims 1-23, 15-42, and 45-48 of application Serial No. 06/914,620 ¹ under 35

                U.S.C. § 112, first paragraph, as unsupported by an enabling disclosure. 2  We affirm
                

I. BACKGROUND

A. The Invention

The claims on appeal are directed to processes for producing live, non-pathogenic vaccines against pathogenic RNA viruses (claims 1-10, 22-37, 40, 45, and 46), vaccines produced by these processes (claims 11, 12, 15-21, 38, and 39), and methods of using certain of these claimed vaccines to protect living organisms against RNA viruses (claims 41 and 42). Wright's specification provides a general description of these processes, vaccines, and methods of use, but only a single working example.

In this example, Wright describes the production of a recombinant vaccine which confers immunity in chickens against the RNA tumor virus known as Prague Avian Sarcoma Virus (PrASV), a member of the Rous Associated virus (RAV) family. To produce this vaccine, Wright first identified the antigenic gene region of the genome of PrASV as being in the envelope A (env A) gene region of this virus, and then isolated and cloned a large quantity of this antigenic gene region. Following cloning, Wright introduced by transfection the cloned env A genes into C/O cells, a particular chicken embryo cell line. The C/O cells were then infected with the endogenous, non-oncogenic, O-type Rous Associated Virus (RAV-O) and incubated. Genetic recombination and viral replication occurred during incubation, resulting in an impure vaccine containing particles of the recombinant virus referred to as RAV-O Ac ⁿ, or RAV-O-A. ³ Wright then purified this vaccine to obtain a vaccine containing only genetic recombinant RAV-Ac ⁿ virus particles. The Examiner ultimately allowed claims 13, 14, 43, and 44, which are specific to the particular process and vaccine disclosed in this example. ⁴

Wright seeks allowance, however, of claims which would provide, in varying degrees, a much broader scope of protection than the allowed claims. For example, independent process claim 1 reads:

A process for producing a live non-pathogenic vaccine for a pathogenic RNA virus, comprising the steps of identifying the antigenic and pathogenic gene regions of said virus; performing gene alteration to produce a genome which codes for the antigenicity of the virus, but does not have its pathogenicity; and obtaining an expression of the gene.

Dependent claims 2-10, 22-35, and 40 recite additional limitations to this process. Independent claims 36 and 45 and claims 37 and 46 dependent therefrom, respectively, are also directed to processes for producing vaccines.

Independent product claim 11 reads:

A live, non-pathogenic vaccine for a pathogenic RNA virus, comprising an immunologically effective amount of a viral antigenic, genomic expression having an antigenic Dependent claims 15-21 recite additional limitations to this vaccine. Independent claims 38 and 47 and claims 39 and 48 dependent therefrom, respectively, are also directed to vaccines.

determinant region of the RNA virus, but no pathogenic properties.

Dependent claims 41 and 42 recite methods of protecting living organisms against RNA viruses, which comprise introducing into a host an immunologically effective amount of the vaccine of claims 11 and 38, respectively.

B. The Rejection

The Examiner took the position in her Examiner's Answer that the claims presently on appeal are not supported by an enabling disclosure because one of ordinary skill in the art would have had to engage in undue experimentation in February of 1983 (the effective filing date of Wright's application) to practice the subject matter of these claims, given their breadth, the unpredictability in the art, and the limited guidance Wright provides in his application. The Examiner noted that many of Wright's claims read on vaccines against all pathogenic RNA viruses, even though RNA viruses are a very diverse and genetically complex group of viruses which include, among others, acquired immunodeficiency syndrome (AIDS) viruses, leukemia viruses, and sarcoma viruses. The Examiner argued that Wright's single working example merely evidenced that Wright had obtained successfully a particular recombinant virus vaccine, and that this single success did not provide "sufficient likelihood" that other recombinant RNA viruses could be constructed without undue experimentation, or if they were constructed, that they would be useful in the design of live viral vaccines. The Examiner noted the inability of the scientific community to develop an efficacious AIDS virus vaccine for humans despite devoting a considerable amount of time and money to do so.

The Examiner further argued that, even though retroviruses as a class may exhibit similar gene order and possess envelope proteins, this alone does not support a general conclusion that all RNA virus envelope proteins will confer protection against the corresponding virus. The Examiner asserted that this held true even among avian RNA tumor viruses. At page 11 of her Answer, the Examiner stated that "one envelope gene's immunogenicity cannot be extrapolated to another envelope gene. The efficacy of each should be ascertained individually."

To support the foregoing, the Examiner relied upon an article by Thomas J. Matthews et al., Prospects for Development of a Vaccine Against HIV, in Human Retroviruses, Cancer, and AIDS: Approaches to Prevention and Therapy 313-25 (1988). This article indicates that AIDS retroviruses, which represent only a subset of all RNA viruses, were known even as late as 1988 to show great genetic diversity, including divergent virus envelopes. It further indicates that, although AIDS retroviruses elicited strong immune responses in goats and chimps in 1988, the resulting antibodies did not prevent retrovirus infectivity. Moreover, this article also recognizes at page 321 that, as of 1988, animal models for HIV infection and disease were likely to be imperfect, and therefore testing of primary vaccine candidates in man was necessary to determine safety, immunogenicity and efficacy.

Finally, the Examiner also argued that, irrespective of immunogenicity and vaccine considerations, the methods of identification, isolation, cloning, and recombination which Wright describes in his application in only a very general manner were not so developed in 1983 as to enable, without undue experimentation, the design and production of recombinant virus vaccines against any and all RNA viruses. The Examiner also asserted that the considerable amount of time and effort that it took Wright to construct the particular avian recombinant virus described in his single working example and to establish its efficacy as a vaccinating agent illustrates the amount of undue experimentation that would have been required in February of 1983 to practice Wright's invention, especially given that the efficacy of the developed virus could not be extrapolated with any certainty to other recombinant viruses at that time.

C. The Board Decision

In its January 16, 1992 decision, ⁵ the Board held that the Examiner did not err in questioning the enablement of the physiological activity required by the appealed claims, given the breadth of these claims and the fact that a vaccine must by definition provoke an immunoprotective response upon administration. The Board found that Wright had failed to establish that the general description of his invention set forth in his application was anything more, in February of 1983, than an invitation to experiment. The Board agreed with the Examiner that this general description does not set forth such sufficient detailed guidance that one of ordinary skill in the art would have had any reasonable expectation of success in constructing other vaccines against other RNA viruses. The Board additionally noted that the Examiner only allowed the claims limited to Wright's single working example after Wright submitted in vivo evidence of the efficacy of this vaccine.

The Board further held that the record did not support Wright's arguments that his single working example enables some of his dependent claims which are closer in scope to the allowed claims than to independent claims 1 and 11. The Board found that, even if Wright was correct in stating that it was generally known that an "immune response" is assured by use of an antigenic envelope protein, the record did not establish that such an "immune response" would have been an immunoprotective one, or moreover, that one skilled in this art would have expected such a result in February of 1983. The Board relied upon the Matthews et al. article as evidencing that "the mere use of an envelope protein gene in the present invention is not seen to necessarily result in the obtention of successful vaccines throughout the scope of even these more limited claims." Bd.Dec. at 6.

As to Wright's request that the Board consider several declarations and exhibits of record, the Board stated that it found no reason to consider this evidence with any particularity since Wright had failed to advance any specific arguments based on this evidence or to explain its relevance.

II. D...