Appeal No. 2003-0936
Application No. 09/532,806
Having considered all the evidence, we are not convinced that
the examiner has satisfied her burden to show that, in light of the
guidance and direction provided by appellants’ specification, the
kind and amount of experimentation required of one skilled in the
art to make and use the full scope of the subject matter claimed is
more than routine.
More significantly, however, the examiner urges (EA 8-9)
(emphasis added):
Appellants need to provide sufficient guidance for one
skilled in the art to determine which of the claimed
subfragments of SEQ ID NO:1 would be likely to have
promoter function. In the absence of such guidance,
it would require undue experimentation for one skill[ed]
in the art to practice the claimed invention, because
the ability of a particular nucleic acid sequence to
function as a promoter is highly unpredictable on the
basis of nucleotide sequence information alone. . . . .
The examiner maintains that to provide sufficient guidance
for one skilled in the art to determine which sequences
have promoter function, the specification must provide
some indication of what specific nucleotides the sequences
must retain in order to retain promoter function. Appellants
need not describe why or how the invention works in order to
provide such guidance.
Also see the examiner’s rationale below (EA 11):
The examiner does not assert that one skilled
in the art would be without sufficient guidance in
obtaining the claimed contiguous subfragments because
the specification does not provide sufficient structural
and functional information to prepare the recited
sequences. The examiner asserts that one skilled
in the art would be without sufficient guidance in
recognizing the claimed contiguous subfragments that
24
Page: Previous 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Next
Last modified: November 3, 2007