Appeal No. 2006-2556 Page 6
Application No. 09/977,155
portion of the protein intact. Thus, the cytoplasmic C-terminal tail remains attached to
the protein’s transmembrane domain, and therefore also remains attached to the cell
membrane. By contrast, claim 1 requires that the protease “release[] the tail from the
membrane.”
The examiner argues that Appellants improperly seek to import the limitation
requiring cytoplasmic release of the C-terminal tail from the specification into the claims.
Answer, page 7. We do not agree. As pointed out supra, claim 1 requires the protease
to “release[] the tail from the membrane,” and the only tail recited in claim 1 is the
C-terminal tail. Thus, in our view, one need only look to the limitations of claim 1 to
conclude that Willnow does not anticipate the claim.
The examiner also argues that, because claim 1 uses open “comprising”
language to describe the process, claim 1 encompasses additional steps not recited in
the claim, including Willnow’s biochemical extraction steps urged by Appellants as
releasing the C-terminal tail from the membrane. Answer, page 8.
We agree with the examiner that the language of claim 1 encompasses
additional process steps not recited in the claim. However, in our view, Willnow does
not anticipate claim 1 because, as discussed supra, the reference does not disclose a
protease that releases the C-terminal tail from the cell membrane. Thus, the fact that
claim 1 encompasses additional steps does not negate the fact that Willnow fails to
disclose a limitation explicitly recited in the claim.
To summarize, we agree with Appellants that Willnow does not describe a
protease that cleaves the transmembrane domain of an LDL receptor, resulting in
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