Appeal No. 2001-0121 Page 4
Application No. 08/212,185
sequence to which the protein binds, as well as (3) possession of
antibodies specific to the protein in its phosphorylated state.
With regard to the first observation, the examiner finds (id.), “the claims
are not limited to the detection of any particular protein….” Therefore, the
examiner concludes (Answer, bridging sentence, pages 4-5), “[i]t would require
undue experimentation to isolate other receptor recognition factors, determine
their DNA ligands and the identity of the receptors which they recognize and
develop appropriate detection methods to allow practice of the claimed invention
in a manner commensurate in scope with the claims.”
With regard to the second observation, the examiner finds (Answer,
page 4), “[i]t would require undue experimentation to determine the DNA ligand
of the 84 kD protein as required to practice claims 99 and 100.” Therefore, the
examiner concludes (id.), “[i]n the absence of any guidance as to the chemical
structure of that DNA ligand, it is unpredictable that the person of ordinary skill in
the art could practice the invention of claims 99 and 100 as they relate to the 84
kD protein without undue experimentation.”
With regard to the third observation, the examiner finds (Answer, page 5),
that while the specification makes use of anti-phosphotyrosine antibodies, “there
is no disclosure in the specification as filed of antibodies which are specific for a
phosphorylated receptor recognition factor.” According to the examiner (id.):
It would require undue experimentation to determine how to get a
sufficient quantity of the desired protein in its phosphorylated and
non-phosphorylated forms, generate antibodies to the
phosphorylated form, and then eliminate the possibility that the
antibodies obtained are not specific to the phosphorylated form of
the particular protein, as opposed to either the non-phosphorylated
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007