Appeal No. 2005-1745
Application No. 09/161,680
substrate specificity” simply with the”(=mutations in the enzyme used)”.[3] This is
wholly unclear. Nowhere in the specification can a clear definition of the term
“substrate specificity” be found. Thus, its metes and bounds are unclear.
The appellants then filed an amendment changing claims 12-23 to a “method for
generating new catalytic activity in an enzyme.” See, the amendment received by the
USPTO on April 15, 2003. The amended, as well as the newly added, claims were
directed to a “method for generating a new catalytic activity in an enzyme.” In addition,
the specification was amended, inter alia,4 to read (at p. 3, line 42- p. 4, line 5), as
follows:
Generation of new catalytic activities Alteration of the substrate specificity in the
novel method means that the enzymes having been subjected to the method are
able to convert substrates which they were previously unable to convert, because
the affinity of the enzyme for the substrate was too low (i.e., = high KM) and/or the
rate of conversion catalytic activity (= kcat) of the enzymes was too low. In these
cases, the ratio of kcat/ KM is zero or almost zero, i.e., catalysis does not occur.
The generation of a new catalytic activity alteration in the substrate specificity
reduces the KM or increases the kcat, or both, i.e., the ratio of kcat/ KM becomes
greater than zero. A catalytic reaction occurs. The enzyme converts the new
substrate after the mutagenesis.
3 As we understand it, the examiner is referring to the section of page 6, lines 4-
9, in the originally-filed specification which read as follows:
For detection of the altered substrate specificity (= mutations in the
enzyme used) it is possible and advantageous, in the case where vectors
have been used, for the DNA initially to be isolated from the E. coli strain
XL1 Red or its functional derivative and be inserted into a microorganism
which has no corresponding enzyme activity (step c, Figure 1).
4 Page 6, as well as other sections of the specification were also amended by
deleting reference to an altered substrate specificity and inserting thereto “newly
generated catalytic activity.”
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