Appeal No. 2004-0290
Application No. 09/742,692
(page 12 of principal brief, second paragraph, emphasis added).
Appellants repeat in their reply brief the argument that “Beggs
does not appear to disclose the same antibody part, or other
stain-binding parts as those utilized in the present invention”
(page 2, second paragraph, emphasis added). Manifestly, this
speculation on the part of appellants falls far short of
establishing the requisite clear line of demarcation between
enzymes within the scope of claim 1 and those fairly disclosed by
Beggs.
As for appellants’ argument that Beggs does not suggest any
dependency or relationship between the pI value of the stain-
binding part of the enzyme and the pH of the wash solution, it is
not necessary for the reference to disclose such a property of
the enzyme that is inherently possessed. Also, the question
arises, based on the close correspondence between appellants’ and
Beggs disclosure, how one of ordinary skill in the art would be
enabled to select enzymes having the claimed pI without resorting
to undue experimentation. Totally lacking in appellants’
principal and reply briefs is any argument that an actual
specific enzyme, or class of enzymes, is not within the Beggs
disclosure.
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