Appeal No. 2003-2017 Page 6
Application No. 09/802,116
fragments of SEQ ID NO:1 (original claim 1) as well as polynucleotides that,
among other things, hybridize to SEQ ID NO:1 under stringent conditions (claim
2). These claims were rejected as anticipated. See Paper No. 8, mailed Nov.
23, 2001. In response, Appellants cancelled claim 2 and rewrote claim 1 in its
present form.. See Paper No. 9, filed Feb. 26, 2002. Appellants stated that
as claim 1 has been amended to recite the complete nucleotide
sequence of SEQ ID NO:1 . . . and claim 2 has been cancelled
without prejudice and without disclaimer, Applicants submit that the
rejection of claims 1-2 under 35 U.S.C. § 102(a) has been
overcome.
Id., page 10. Thus, as the prosecution history makes clear, the language of the
claims on appeal does not allow for any variation in the recited sequences,2 even
though the open claim language allows for inclusion of additional sequence(s) at
the 3’ or 5’ end of the claimed polynucleotides.
The examiner rejected all of the elected claims for lack of utility. The
examiner bears the initial burden of showing that a claimed invention lacks
patentable utility. See In re Brana, 51 F.3d 1560, 1566, 34 USPQ2d 1436, 1441
(Fed. Cir. 1995) (“Only after the PTO provides evidence showing that one of
ordinary skill in the art would reasonably doubt the asserted utility does the
burden shift to the applicant to provide rebuttal evidence sufficient to convince
such a person of the invention’s asserted utility.”).
the Examiner’s Answer, page 8. Therefore, our conclusion with respect to the § 101 issue also
applies to the § 112 issue.
2 Thus, to the extent that the specification discusses NHP “homologs,” “domains,” “mutant
versions”, hybridizing sequences, and functional equivalents (e.g., pages 3-5, 10-11, and 16-17),
the present claims do not encompass those embodiments.
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