Appeal No. 2003-0835 Page 8
Application No. 09/419,371
members, and the rejection of claims 9-20 and 39-50 under 36 U.S.C. § 112, first
paragraph, as lacking adequate written description, is reversed.
3. Rejection under 35 U.S.C. § 112, first paragraph, lack of enablement
Claims 9-20 and 39-50 stand rejected under 35 U.S.C. § 112, first
paragraph, on the grounds that the specification, “while being enabling for
assessing the effect of a drug on particular species of dCREB2 activators and
repressors as disclosed in the specification, see in particular pp. 2-12, etc., does
not reasonably provide enablement for the claimed invention as drawn to a
genus and subfamily of molecules. The specification does not enable any
person skilled in the art to which it pertains, or with which it is most nearly
connected, to make and use the invention commensurate in scope with these
claims.” Paper No. 10, page 5.
According to the rejection,
the specification fails to teach a mammalian assay for assessing
the effect of a drug on long term memory formation, a mammalian
method for screening a pharmaceutical agent for its ability to
modulate long term memory and fails to teach a mammalian assay
for determining the relative levels of mammalian dCREB2,
activators, repressors, CREB/CREM/ATF-1 subfamily members,
activator isoforms, repressor isoforms and antagonists. The
specification only discloses Drosophila activators as set forth, see
in particular dCREB2a, dCREB2b, dCREB2c, etc. One skilled in
the art recognizes that although different species often possess
homologous proteins, the skilled artisan is unable to predict with
any measure of certainty the function of structurally divergent
molecules [citing Skolnick4, abstract and Box 2]. Thus, for those
divergent peptide structures between Drosophila as disclosed and
mammalian as claimed, the skilled artisan would be required to
perform further undue experimentation to discover those peptides
4 Skolnick et al. (Skolnick), “From genes to protein structure and function: novel applications of
computational approaches in the genomic era,” TIBTECH, Vol. 18, pp. 34-39 (2000).
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