Appeal No. 2002-1630 Page 19
Application No. 09/175,713
aminooxypentane-modified chemokine would be the same as the polynucleotide
encoding the unmodified chemokine.
On return of this application, the examiner should consider whether claim
1 is sufficiently definite to meet the requirements of 35 U.S.C. § 112, second
paragraph. In addition, if a polynucleotide encoding an aminooxypentane-
modified chemokine is, in fact, the same as a polynucleotide encoding an
unmodified chemokine, the examiner should consider whether any of the claims
are anticipated by prior art disclosing a chemokine-encoding polynucleotide.
Summary
We reverse the rejection for inadequate written description because the
examiner has not adequately explained why those skilled in the art would not
have recognized the specification’s description as showing that Appellants were
in possession of the invention now claimed. We also reverse the rejection of
claims 6-9 for nonenablement, because the examiner has not explained why
undue experimentation would have been required to make and use fragments of
the recited amino-terminal-modified chemokines, or variants encoded by
polynucleotides that hybridize under stringent conditions. However, we affirm the
rejection of claims 1-5, 10-14, 17, and 18 for nonenablement, because claim 5
reads on amino-terminal-modified chemokines that vary from the recited
chemokines in any way and to any degree, and the specification does not
provide sufficient guidance to practice the very broad scope of this claim.
Claims 1-4, 10-14, 17, and 18 fall with claim 5.
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