Appeal No. 2001-2394 Page 10
Application No. 08/437,306
matter the examiner has indicated to be enabled, and that which she has
indicated would require undue experimentation. The examiner indicated that the
claims are not enabled for “a DNA sequence which specifically hybridizes” to
SEQ ID NO:1 or other nucleic acids encoding SEQ ID NO:2. At the same time,
however, the examiner indicated that the claims are enabled for “a nucleic acid
which hybridizes to the complement [of a nucleic acid encoding SEQ ID NO:2]
under conditions of 4XSSC at 50°C or hybridization with 30-40% formamide at
42°C.” Examiner’s Answer, pages 4-5. These conditions are described in the
specification as “[e]xamples of non-stringent hybridization conditions.” See
page 6.
Hybridization to a given nucleic acid under stringent conditions requires a
higher degree of sequence similarity than does hybridization under non-stringent
conditions. Thus, as indicated in the specification, some nucleic acids will
hybridize to a given nucleic acid sequence under non-stringent conditions even
though they will not hybridize to the same sequence under stringent conditions.
See page 6. The reverse is not true – any nucleic acid that hybridizes to a given
target under stringent conditions would also be expected to hybridize to the same
target under non-stringent conditions. Thus, the sequences that the examiner
has rejected as nonenabled (those that hybridize under stringent conditions)
would appear to be a subset of the sequences that the examiner has indicated to
be enabled (those that hybridize under non-stringent conditions).
Under the circumstances, we believe the most appropriate course is to
vacate the nonenablement rejection on appeal and allow the examiner to
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