Appeal No. 1999-1458
Application No. 07/943,812
With reference to page 14, “Scheme 1” of the specification, appellants
argue (Brief, page 6) that this “convention is used in the instant specification.”
However, the examiner argues (Answer, page 7) that while “[a]ppellants argue
that one skilled in the art would know that nucleotide ‘0’ is the transcriptional start
site … the convention is that the transcriptional start site is nucleotide ‘1,’ not ‘0’.”
In response, appellants argue (Reply Brief, page 4) “the ‘conventional’
numbering to which the examiner refers, where ‘+1’ is the start, also used [sic] ‘-
1’ as one base before the start. Thus, ‘-550 to –50’ is the same for both.” We
agree with appellants. We also note that in “SCHEME 1” of the specification
(page 14) “+1” is defined as “0”.
The examiner also finds (Answer, page 7) that “Angel et al. indicate that
the jun gene has at least three transcriptional start sites. They state, ‘[t]he major
start site of transcription was arbitrarily numbered +1’ (Fig. 4) and later refer to
‘two minor start sites’ (p. 878, col. 1).” In response, appellants argue (Reply
Brief, page 4), “Scheme 1 indicates the general position of the defined start site,
if for no other reason, than the spacing of the six CArG domains.” As we noted
above, “SCHEME 1” of the specification (page 14) defines “+1” as “0.”
Therefore, regardless of the existence “minor start sites,” Angel defined the “+1”
site, this site to appellants specification is defined as “0” and is therefore the
“frame of reference” from which –550 to –50 are determined.
Therefore, in our opinion, the claims reasonably apprise those skilled in
the art as to their scope. Accordingly, we reverse the rejection of claims 1, 3-21,
36, 48 and 52-55 under 35 U.S.C. § 112, second paragraph.
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