Appeal No. 2002-0779 Page 7
Application No. 08/825,746
needed for DNA binding, and therefore were not needed for p53 function. See
Steinmeyer, page 504, right-hand column.
Taken together, then, the specification and Steinmeyer indicate that amino
acids 132-309 are required for p53 function, and codons 1-40 and a certain
number of codons at the N-terminus are not required. Thus, the experimentation
required by the instant claims would appear to be limited to determining how
many of the amino acids between positions 41 and 131, and how many of the
codons between positions 310 and the C-terminal 393, could be deleted without
adversely affecting the function of p53.
We agree with Appellants that this experimentation would not appear to be
undue. At most, the skilled artisan would be required to make and test a series
of deletion mutants of p53. This experimentation might be tedious, but it would
not seem to be undue. See In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400,
1404 (Fed. Cir. 1988) (“[A] considerable amount of experimentation is
permissible, if it is merely routine, or if the specification in question provides a
reasonable amount of guidance with respect to the direction in which the
experimentation should proceed.”).
The examiner’s evidentiary references do not appear to be on point.
Bowie, Ngo, and Frommel all address the unpredictable effects that point
mutations can have on the function of an encoded protein. Here, however, the
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