Appeal No. 1999-1458
Application No. 07/943,812
We offer the following observations for the examiner’s consideration.
I. Tsai-Morris:
Upon review of this administrative file, we note that Tsai-Morris6 appears
to correspond to at least claim 1 of appellants’ claimed invention. Specifically,
Tsai-Morris teach “the isolation of a mouse Egr-1 genomic clone, its intron-exon
structure and 935 bp of 5’ flanking sequence. The gene spans about 3.8 kb and
consists of 2 exons and one 700 bp intron.” See abstract. In addition, Tsai-
Morris teach (id.) that this clone contains “five elements whose sequence is
nearly identical to the inner core 10 nucleotide region (CCATATTAGG) of the
c-Fos serum response element….” We note that appellants specification defines
the claimed CArG domain as a “serum response or CC(A/T)6GG” domain. In
addition, we note that this DNA molecule is expected to encode at Egr-1, which
is a polypeptide other than CAT.
Upon return of this application, the examiner should take a step back and
determine whether Tsai-Morris anticipates the claimed invention. In this regard,
we note as set forth in In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657
(Fed. Cir. 1990):
discovery of an unobvious property and use does not overcome the
statutory restraint of section 102 when the claimed composition is
known. While Spada's position is that his polymers are not
anticipated by the polymers of Smith because their properties are
different, Spada was reasonably required to show that his polymer
compositions are different from those described by Smith. This
burden was not met by simply including the assertedly different
properties in the claims. When the claimed compositions are not
6Tsai-Morris et al. (Tsai-Morris), “5’ flanking sequence and genomic structure of
Egr-1, a murine mitogen inducible zinc finger encoding gene,” Nucleic Acids
Research, Vol. 16, No. 18, pp. 8835-8846 (1988).
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