Appeal No. 2004-1346 Page 3
Application No. 08/971,338
Claims 4-7, 22, 24, 25 and 28-30 stand rejected under 35 U.S.C.
§ 112, first paragraph, as based on a specification which fails to adequately
describe the claimed invention.
We affirm the utility rejection under 35 U.S.C. § 101 as lacking utility and
§ 112, first paragraph. Having disposed of all claims on appeal, we do not reach
the merits of the rejection under the written description provision of 35 U.S.C.
§ 112, first paragraph2.
BACKGROUND
“The present invention relates, in general, to DNA segments encoding
proteins of the transforming growth factor superfamily. In particular, the present
invention relates to a DNA segment encoding GDF-1….” Specification, page 1.
“The GDF-1 gene was isolated by virtue of its homology to the transforming
growth factor beta (TGF- β) superfamily.” Brief, page 2. Accordingly, appellant
asserts (id.), “[p]otential uses for GDF-1 as a therapeutic and diagnostic tool are
suggested based on the known biological activities of other members of this
superfamily….”3
In this regard, we note that appellant discloses (specification, page 20),
“GDF-1 is most homologous to VG-1 (52% and least homologous to inhibin-α
2 For clarity, we note that appellant characterizes this issue as comprising two parts, (1) a written
description rejection of claims 4-7, 22, 24, 25, 30, 34 and 35; and (2) a new matter rejection of
claims of claims 34 and 35. See Brief, pages 5-6. According to the examiner (Answer, page 3),
however,
[c]laims 4-7, 22, 24, 25 and 28-30 are rejected under 35 U[.]S[.]C[. §] 112[, first
paragraph] with respect to written description. Claims 34 and 35 were particularly
addressed with respect to new matter ….
However, contrary to appellant’s characterization, claims 34 and 35 were not separated
from the rejection of claims 4-7, 22, 24, 25 and 28-30 in this ground of rejection.
3 In this regard, we note that according to the examiner (Answer, page 6), “the specification
discloses that the activities of the members of the TFG-β [sic] superfamily vary quite widely. (See
specification at pages 1-2 and 12-15.)[.]”
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