Appeal No. 1996-3330
Application 07/861,458
Upon return of this application to the examining group, we would urge the examiner
to step back and consider anew the claims pending in this application. We note that
claims 38 and 66 are directed to a method of identifying a structural homologue in a first
organism which is structurally homologous with a gene first identified in a second organism
wherein probes, based on the nucleotide sequence of said gene, are used in the genome
of a third organism which is phylogenetically positioned between the first and second
organism. The resulting homologues are identified (steps b-d) and probes based on these
structural homologues are used to detect hybridization signals in the genome of an
additional organism which is phylogenetically located between the first organism and the
first additional organism. (step e). Steps b-e are repeated until said structural homologue
of said first organism is identified. (step f). It is unclear to us, how the structurally
homologous gene of the first organism is to be identified when the probes identified
through the claimed process are never used to probe the genome of the first organism.
Each step of the claimed process is performed on an intermediate organism (steps a-f)
and there is no provision or requirement that the genome of the first organisms ever be
probed. We leave to the examiner in the first instance to determine whether the disclosure
in support of the claims on appeal would enable one skilled in this art to practice the
invention without undue experimentation in the absence of a step where the previously
identified structural homologues are used to screen or probe the genome of the first
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