Appeal No. 2003-1817 Page 5
Application No. 09/501,714
52 b) include so-called nonfunctional alleles. However, those nonfunctional alleles must
be “naturally occurring” and be at least “90% identical to the polynucleotide sequence of
SEQ ID NO:1 or SEQ ID NO:3.”(claim 45 b) or “of SEQ ID NO:2 or SEQ ID NO:4" (claim
52 b)). In our view, these two limitations adequately describe the genus of
polynucleotides encompassed by claim 45 b) and 52 b) without these claims further
including a functional limitation.
We understand the examiner’s concern that one may not recognize that a
polynucleotide sequence having 90% identity with that of SEQ ID NO:1, SEQ ID NO:3,
SEQ ID NO:2, or SEQ ID NO:4 is “naturally occurring.” However, that concern is more
properly raised under a rejection under 35 U.S.C. § 112, second paragraph, rather than
the written description requirement of the first paragraph.
The written description rejection is reversed.
2. Obviousness.
We initially note that appellants state that the claims are grouped together for the
purposes of this rejection. Appeal Brief, page 6. Accordingly, we shall decide the
issues raised in the Examiner’s obviousness rejection as they pertain to claim 54.
37 CFR § 1.192(c)(7). We also note that the three Hillier references relied upon by the
examiner appear to be substantially similar. Thus, we shall consider the merits of the
examiner’s rejection as it is based upon Hillier accession N933160.
Claim 54 is directed to a method for detecting a target polynucleotide said to
comprise the polynucleotide of claim 52 in a sample. To this end, a sample is
hybridized with a probe comprising at least 16 contiguous nucleotides comprising a
sequence complementary to said target polynucleotide in the sample. The probe will
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