Appeal No. 1997-3242
Application 07/929,834
technology. Specification, pages 47-49. However, further according to the specification,
at the time of the invention, advances in RNA synthesis had made previously scarce RNA
molecules available for structural analysis by computer modeling. Id., pages 11 and 47.
In reviewing the specification as a whole, it appears that appellant’s focus on critical
sites within the minor groove of an RNA molecule, where the nucleotide bases and their
primary sequence are most accessible, takes the claimed invention out of the realm of trial
and error methodology. Once the sequence and local three-dimensional structure of a
critical site in a targeted RNA molecule are elucidated by computer modeling, the
specification teaches that “[s]pecific binding to the targeted molecule can be achieved by
including in the molecule [a] complementary nucleic acid sequence that forms base pairs
with the targeted RNA . . . or by inclusion of chemical groups having the correct spatial
location and charge.” Id., page 49. Finally, Wilson does not appear to describe anything
beyond screening known DNA-binding compounds for preferential binding to RNA, thus, it
does not provide evidence of failed attempts to design a compound to specifically bind a
critical site (of known sequence and local three-dimensional structure) within the minor
groove of an RNA molecule.
It is well settled that the examiner bears the initial burden of providing reasons why a
supporting disclosure does not enable a claim. As stated in In re Marzocchi, 439 F.2d 220,
223, 169 USPQ 367, 369 (CCPA 1971):
[A] specification disclosure which contains a teaching of the manner and
process of making and using the invention in terms which correspond in
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