Appeal No. 2002-1630 Page 16
Application No. 09/175,713
“encompass sequences comprising fragments as well as sequences identified by
homology. They thus encompass sequences that vary widely from what is
disclosed, and the skilled artisan would not predictably be able to use such
molecules as disclosed.” Examiner’s Answer, page 15.
We reverse the rejection as it is applied to claims 6-9. These claims are of
much narrower scope than, for example, claim 5. Claim 6 is representative. It
encompasses the specific polynucleotide sequence of SEQ ID NO:6 (also
defined by reference to an ATCC accession number), polynucleotides encoding
the same amino acid, and the complements of these polynucleotides. These
parts of the claim do not seem to bother the examiner.
The examiner’s basis for rejecting the claim as nonenabled are the two
other types of polynucleotide encompassed by claim 6: “(d) a polynucleotide
encoding a protein comprising an amino-terminal fragment of the amino acid
sequence of SEQ ID NO:10; . . . [and] (f) a polynucleotide capable of hybridizing
at either (i) 4xSSC at 65°C or (ii) 50% formamide and 4xSSC at 42°C, to any of
the polynucleotides specified in (a)-(e) above.” The examiner has not adequately
explained why practicing these parts of claim 6 would have required undue
experimentation.
With respect to fragments, the examiner has presented no explanation of
why undue experimentation would have been required to distinguish between
active and inactive amino-terminal fragments of a specified polypeptide
sequence. With respect to “hybridizing” polynucleotides, such as those recited in
part (f) of claim 6, the specification defines the recited conditions as being
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