Appeal No. 1999-0197
Application 08/054,970
claim 37 is directed to a method for identifying molecules which interact with TNF-R to
modulate signal transduction. The method comprises three steps: (1) preparing a
specified target peptide, (2) screening peptide libraries and/or broth of biological matter
with the target peptide and identifying any molecules which bind to the target peptide and
(3) screening any molecules identified in the second step for their ability to modulate signal
transduction of TNF-R to identify any molecule which tests positive for such signal
transduction modulation. As can be seen, claim 37 does not require that any molecule be
actually identified.
The use claims however do require the presence and use of a molecule which
interacts with a specified portion of TNF-R. For example, claim 34 requires identification
of a specific molecule and bringing that molecule into contact with a specified portion of
TNF-R.
Discussion
We start our analysis with the proposition that the examiner bears the initial burden
of providing reasons why the supporting disclosure does not enable a claim. In re
Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA 1971). In reviewing the
examiner’s statement of the rejection on pages 3-5 of the Answer, we find the examiner is
concerned that the specification does not set forth “one example of an agent that binds to
the TNF-R at any set of amino acids or those amino acids set forth in Claims [sic] or its
effector protein.” The examiner also states at page 4 of the Answer that “it is not
predictable what the agent is that will stabilize the TNF-R or will bind an effector protein to
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