Appeal No. 1999-0197
Application 08/054,970
TNF-R, to blunt its signal transduction because there is not guidance in the specification as
to what the characteristics of this (these) agent is.” The examiner also questions the
identity of the “effector protein” which forms part of the present invention. The examiner
concludes at page 5 of the Answer that “it would require undue experimentation for one of
ordinary skill in the art to use the method claimed because no guidance is provided in the
specification as to what agents will be useful for modulating signal transduction by binding
the TNF-R or by binding to an effector protein that interacts with the TNF-R.”
It is difficult to review the examiner’s rejection as expressed in the Answer because
the examiner has not addressed the requirements of any individual claim on appeal. While
certain of the examiner’s statements may be correlated to the requirements of some of the
claims on appeal, and in responding to appellants’ arguments presented in their Appeal
Brief, the examiner has further elaborated her position, we do not have a precise, coherent
statement why any single claim on appeal is unpatentable.
Turning first to the screening claims, we find that this aspect of the rejection can be
easily decided. As seen from representative claim 37, the claimed method does not
require that molecules which interact with TNF-R to modulate signal transduction by the
TNF-R be actually identified. The examiner argues at page 11 of the Answer that step c)
of claim 37 was “not an optional step.” However, the examiner has lost sight of the fact that
step b) of claim 37 only requires a screening step to identify any molecules which bind to
the target peptide. Step c) only requires further screening if any molecules are identified in
step b). It may be that the material screened in screening step b) of claim 37 will not
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