Appeal No. 2003-1792
Application No. 09/434,598
functional EGS since these were all shown to have activity, for example.
Appellant argues that these could not represent EGS targeting a
substantial number of sites. It is noted however that the specification and
applicant arguments fail to provide specifically what constitutes a
substantial number... It is the position of the examiner that the 12
functional EGS of Shaji [George] et al would clearly represent a
substantial number. It appears that applicant admits on page 10 of the
Brief that the 12 EGS of Shaji [George] et al could be identified by the
instantly claimed method but then argue again that this would not
constitute a substantial number or “sufficient “coverage’ of accessible
sites.”
In the Answer, the examiner also quotes a passage from the prosecution history,
an Office Action mailed 2/12/02. In that Office Action the examiner states (Answer,
page 7):
Applicant argues that the amendments... overcome the prior art since the
prior art does not teach a set of EGS that target all or a substantial
number of accessible sites on a target RNA. First the instant claims are
not so limited. The instant claims only require that the set of EGSs
collectively target all or a substantial number of the accessible sites in a
target RNA as identified by the method. In other words, if one in the art
tested two EGS in applicants’ methods and found two that work the
resulting set now represents all and a substantial number of accessible
sites as identified in the method. Therefore the set of EGS disclosed by
Shaji [George] et al would collectively target all the accessible target sites
of a target RNA identified using the methods disclosed in Shaji [George]
et al and in the method of the instant invention. [Emphasis original.]
We see no error in the examiner's characterization of George and its relevance
to claim 37.
Appellants argue that the “80EGS of Shaji are not encompassed by the currently
pending claims.” Brief, page 9. However the appellants have not adequately
addressed the examiner’s argument that the 12 EGS of George are encompassed by
the currently pending claims, and have been determined by George to be a functional
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