Appeal No. 2002-1251 Page 2
Application No. 08/459,340
The examiner relies on the following references:
“Antisense ‘97: A roundtable on the state of the industry,” Nature Biotechnology,
Vol. 15, pp. 519-524 (1997)
Branch, “A good antisense molecule is hard to find,” TIBS, Vol. 23, pp. 45-50
(1998)
Claims 74 and 80-82 stand rejected under 35 U.S.C. § 112, first
paragraph, as lacking both an adequate written description and an enabling
disclosure in the specification.
We reverse.
Background
The specification discloses that a catalytic RNA, or ribozyme, can “act as a
catalyst on another RNA or DNA molecule (substrate) by cleaving or ligating
pieces of the substrate without changing itself in the process.” Page 1. “Although
ribozymes are intriguing molecules, their use for in vivo applications is limited if
not precluded. The all-RNA molecules are susceptible to degradation from
enzymes (RNAses) present in vivo.” Id., page 2.
The specification (page 3) discloses
ribozyme like molecules . . . or “nucleozymes” [that] have
ribonucleotides or nucleic acid analogues (hereinafter NAAs) at
catalytically critical sites and NAAs or deoxyribonucleotides at
non-catalytically critical sites. . . .
The nucleozymes . . . thus essentially are modified ribozymes
having at least a portion, or all, of the ribonucleotides replaced with
deoxyribonucleotides or NAAs. The nucleozymes are significantly
more resistant to degradation than their all-RNA ribozyme
counterparts because the chemicals or enzymes present in vivo do
not recognize the nucleic acid internucleotide bonds.
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