Appeal No. 2003-2017 Page 5
Application No. 09/802,116
prognostic technique whereby patients may be tested for abnormal
amounts of NHP. Such antibodies may also be utilized in
conjunction with, for example, compound screening schemes for
the evaluation of the effect of test compounds on expression and/or
activity of a NHP gene product. Additionally, such antibodies can
be used in conjunction with gene therapy to, for example, evaluate
the normal and/or engineered NHP-expressing cells prior to their
introduction into the patient. Such antibodies may additionally be
used as a method for the inhibition of abnormal NHP activity. Thus,
such antibodies can, therefore, be utilized as part of treatment
methods.
Page 23.
Discussion
The claims are directed to a polynucleotide comprising the sequence of
SEQ ID NO:1 (claim 1) and other polynucleotides encoding the same amino acid
sequence (claim 3). The sole issue on appeal is whether the claims are
supported by a disclosure of utility sufficient to satisfy 35 U.S.C. § 101.1
We note at the outset that we construe the claims to require the entire,
specific amino acid or nucleotide sequence that is recited. Thus, claim 1 requires
nucleotides comprising the entire sequence of SEQ ID NO:1 without
substitutions, insertions, or deletions (although the open claim language permits
additional sequences before and/or after the recited sequence). Likewise, claim
2 requires nucleotides encoding at least the entire, unaltered amino acid
sequence of SEQ ID NO:2.
This interpretation of the claims is supported by their literal terms as well
as by the prosecution history. As originally filed, the claims encompassed
1 While the examiner also rejected the claims under 35 U.S.C. § 112, first paragraph, for lack of
enablement, that rejection is presented simply as a corollary of the finding of lack of utility. See
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