Appeal No. 2006-0298 Page 6
Application No. 10/021,955
Thus, even when the rejection mentioned the elected subject matter, the
analysis of the rejection made under 35 U.S.C. § 112, first paragraph, for lack of
enablement, was not limited to the elected subject matter.
Upon return of the application, the examiner should reconsider the
rejection in view of the restriction requirement and the election of species. If the
examiner is withdrawing the restriction requirement and the election of species,
that fact should be stated for the record. If the examiner is not withdrawing the
restriction requirement and the election of species, the analysis accompanying
the rejection should be limited to that subject matter, i.e., the claims as they read
on SEQ ID NO. 76 and 247∆C. In making that rejection, the record should
establish the relationship between SEQ ID NO. 76 and the other claimed SEQ ID
Nos, and why any enablement provided for the other SEQ ID NO.s does not
apply to the elected SEQ ID NO. The same should also be done for the elected
species 247∆C.
Finally, the examiner’s analysis is focused on a method as set forth in
claim 1, and does not adequately address the methods as set forth in claims 35
and 49.
Claim 1 is drawn to a method of diagnosing myelinopathy in an individual.
Claim 35 is drawn to a method of detecting the presence or absence of a
mutation associated with a myelinopathy, and claim 49 is drawn to a method of
detecting a polymorphism or a mutation a periaxin polynucleotide of an individual.
All that is required by those two claim is comparison of the test nucleic acid
comprising a periaxin polynucleotide to a wild-type periaxin polynucleotide, and
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007