Appeal No. 1999-1367
Application 08/453,998
origin and a DNA-binding portion of yeast origin (page 6, lines 11-16). Therefore, we read
the scope of (i)(b) to mean variants which bind both the natural ligand and the natural
response element.
Construction of part (i)(a) follows. The response element is a natural ligand
responsive element, or a variant which retains the function of a natural ligand responsive
element. If a variant, the variant must be a palindromic sequence or a repetition of a
palindromic sequence, and the variant “retains the function of a natural ligand responsive
element activating sequence in” a specified test. Since a natural ligand responsive
element functions by binding with the natural receptor, we read this part of the claim as
meaning variants which bind the same receptor as the natural sequence.
We note that the state of the art includes knowledge of methods to test for the
functionality of variations from the sequence of a natural ligand responsive element. See
for example the Martinez publication cited by the examiner. Martinez also indicates that
there was knowledge in the art of the responsive elements for a number of different
steroids, recognition of the structure of a consensus sequence in the natural structure of
glucocorticoid-responsive elements, and some knowledge of the sequence structure
necessary for the specificity of the response element. The examiner’s statement of the
rejection is devoid of analysis of the state of the prior art. Although the “variants” recited in
the claim are defined using functional language, there is nothing inherently wrong with
functional language. Persons of ordinary skill of the art had knowledge of the structure of
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007