Commissioner’s Decision No. 1329

This decision relates to a patent application entitled “Viruses for the Treatment of Cellular Proliferative Disorders”. The Examiner rejected the application on the basis of anticipation, obviousness, lack of support, and/or indefiniteness. The Patent Appeal Board (PAB) found certain claims to be anticipated by the cited prior art. The PAB also found a number of claims obvious.

The Examiner found that the claimed use is not soundly predicted because there was no demonstration of the use of any of the specific viruses recited in the proposed claims and because there was no factual basis nor an enabling specification as undue experimentation would have been required to practice the invention. The PAB found that the claims are based on a properly supported sound prediction and the disclosure was adequately enabled. Finally, the PAB found that the person of skill in the art “would have no difficulty understanding and predicting what modified viruses fall with the scope of the proposed claims and thus, the proposed claims are definite and comply with subsection 27(4) of the Patent Act.”

The Commissioner of Patents concurred with the recommendations of the PAB that certain amendments be made to the remaining claims and the application issued.