Appeal No. 2003-0835 Page 10
Application No. 09/419,371
We find that the examiner has not met the burden of demonstrating that
the specification fails to enable one skilled in the art to make and/or use the full
scope of the claimed invention. The examiner, as with the previous rejection,
appears to be concerned with the breadth of the phrase CREB/CREM/ATF-1
subfamily members, but as discussed above, that phrase would identify a
particular family of related proteins to the skilled artisan, and the examiner has
not established otherwise.6
Skolnick does not support the examiner’s position, as that is a general
reference discussing sequence-based methods for function prediction. It
therefore does not provide support for the proposition that CREB/CREM/ATF-1
subfamily members do not have similar functions in different species. The Smith
reference fails to support the examiner’s position for the same reason—it is a
general reference and again does not support the proposition that
CREB/CREM/ATF-1 subfamily members do not have similar functions in different
species.
Thus, the rejection of claims 9-20 and 39-50 under 35 U.S.C. § 112, first
paragraph, on the grounds that the specification fails to enable the full scope of
the claimed subject matter, is reversed.
6 We also take note of Hummler et al., “Targeted mutation of the CREB gene: Compensation
within the CREB/ATF family of transcription factors,” Proc. Nat’l Acad. Sci., USA, Vol. 91, pp.
5647-5651 (1994), cited by appellants, which teaches that “[s]ince the cloning of CREB, a large
number of CRE binding proteins have been identified. They all contain a leucine-zipper DNA
binding motif and for some members the potential for heterodimerization has been demonstrated
in vitro. . . . CREM, ATF1 and CREB are strongly related in sequence and appear to be involved
in cAMP signaling to the nucleus.” Id. at 5647, Col. 1.
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