Appeal No. 2003-0835 Page 5
Application No. 09/419,371
the art would understand the bounds of the claim when read in light of the
specification, and here, the examiner is apparently acknowledging that the terms
are definite when read in light of the specification. Thus, the rejection of claims
9-20 and 39-50 under 35 U.S.C. § 112, second paragraph, is reversed.
2. Rejection under 35 U.S.C. § 112, first paragraph, lack of adequate written
description
Claims 9-20 and 39-50 stand rejected under 36 U.S.C. § 112, first
paragraph, as lacking adequate written description.
According to the rejection, “[t]he structural and functional characteristics
for CREB/CREM/ATF-1 subfamily members is undisclosed and it is unclear as to
what structural or functional activity applicants are claiming.” Examiner’s
Answer, page 5. The rejection cites Quinn1, Masquilier2 and Brindle3 to support
the proposition that known CREB and CREM proteins show little homology
(approximately 18%) with dCREBa, SEQ ID NO:2. See id. That evidence
demonstrates, the rejection asserts, “the deficiency in the specification in the
description of CREB/CREM/ATF-1 subfamily members for which the specification
fails to teach those specific residues which are required to describe the family or
which provide any particular function.” Id.
1 Quinn et al. (Quinn), “Cyclic AMP-Dependent Protein Kinase Regulates Transcription of the
Phosphoenolpyruvate Carboxykinase Gene but Not Binding of Nuclear Factors to the Cyclic AMP
Regulatory Element,” Molecular and Cellular Biology, Vol. 10, pp. 3357-3364 (1990).
2 Masquilier et al. (Masquilier), “Human CREM Gene: Evolutionary Conservation, Chromosomal
Localization, and Inducibility of the Transcript,” Cell Growth & Differentiation, Vol. 4, pp. 931-937
(1993).
3 Brindle et al. (Brindle), “Protein-kinase-A-dependent activator In transcription factor CREB
reveals new role for CREM repressors,” Nature, Vol. 364, pp. 821-824 (1993).
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