Appeal No. 2003-1794 Page 4
Application No. 09/804,969
additionally be used as a method for the inhibition of abnormal NHP
activity. Thus, such antibodies may, therefore, be utilized as part of
treatment methods.
Page 23.
Discussion
The claims are directed to a nucleic acid molecule comprising the
sequence shown in the specification’s SEQ ID NO:14 (claim 8), and other nucleic
acid sequences that encode the same amino acid sequence (claim 10). The
examiner rejected the claims as lacking patentable utility.1
1. Claim construction
We interpret claims 8 and 10 to require the entire, specific amino acid or
nucleotide sequence that is recited. Thus, claim 8 requires the entire sequence
of nucleotides shown in SEQ ID NO:14 without substitutions, insertions, or
deletions (although the open claim language permits additional sequences before
and/or after the recited sequence). Likewise, claim 10 requires nucleotides
encoding at least the entire, unaltered amino acid sequence of SEQ ID NO:15.
This interpretation of the claims is supported by their literal terms as well
as by the prosecution history. As originally filed, the claims encompassed
fragments of SEQ ID NO:14 (original claim 8) as well as polynucleotides that,
among other things, hybridize to SEQ ID NO:14 under stringent conditions (claim
9). These claims were rejected as anticipated. See Paper No. 8, mailed Dec.
1 The examiner rejected the claims under both 35 U.S.C. § 101 and 35 U.S.C. § 112, first
paragraph. The rejection for nonenablement, however, was presented simply as a corollary of
the finding of lack of utility. See the Examiner’s Answer, page 6. Therefore, although we discuss
only the § 101 rejection, our conclusion also applies to the § 112 rejection.
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