Appeal No. 1997-2325
Application No. 08/486,403
Claim 1 is illustrative of the subject matter on appeal and is reproduced
below:
1. An isolated multimeric receptor, wherein at least one subunit of said
multimeric receptor is an ultraspiracle receptor, and wherein at least one subunit of
said multimeric receptor is a hormone binding protein; wherein said hormone
binding protein is characterized by having a DNA-binding domain having the amino
acid sequence set forth in SEQ ID NO: 3.
GROUNDS OF REJECTION1
Claims 1-7 and 35-44 are rejected under 35 U.S.C. § 112, first paragraph,
as containing subject matter which was not described in the specification in such a
way as to enable one skilled in the art to which it pertains, or with which it is most
nearly connected, to make and/or use the invention.
We reverse.
DISCUSSION
In reaching our decision in this appeal, we have given careful consideration
to the appellants’ specification and claims, and to the respective positions
articulated by the appellants and the examiner. We make reference to the
examiner’s Answer2 for the examiner’s reasoning in support of the rejection. We
further reference appellants’ Brief3 for the appellants’ arguments in favor of
patentability.
1 We note the examiner withdrew (Answer, page 5) the rejection of claims 1-7 and
35-44 under 35 U.S.C. § 112, first paragraph, as containing subject matter which
was not described in the specification in such a way as to reasonably convey to one
skilled in the relevant art that the inventors, at the time the application was filed, had
possession of the claimed invention.
2 Paper No 34, mailed December 9, 1996.
3 Paper No. 33, received October 4, 1996.
2
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