Appeal No. 2004-1259
Application No. 09/832,355
examiner's analysis does not appear to take into account the above cited paragraphs in
the specification that specifically discuss smooth muscle cell and endothelial cell-
specific factors. Nor has the examiner set forth a prima facie case of lack of written
description with respect to claim 12. Therefore, the rejections of claim 12 for lack of
written description and lack of enablement are without merit and are reversed.
5. Lack of Written Description and Enablement of Properties in Claim 17
The examiner argues that the properties of the second peptide that it promotes
blood vessel wall maturation, blood vessel wall dilatation, blood vessel remodeling,
extracellular matrix degradation, decreases blood vessel permeability or any
combination thereof is not described or enabled by the specification. Answer, page 12.
These properties are set forth in the specification at pages 19-20, paragraph
[0048], and products possessing these properties are disclosed to include, for example,
midkine, TNF-", iNOS, and angiopoietin. Appellants argue that “methods to determine
if a potential second peptide portion exhibits any one of the functional characteristics
set forth in claim 17 are known in the art and described extensively in the specification,
as are methods of generating the claimed fusion protein.” Brief, page 8.
Again, this case turns on which party has the burden in the first instance. The
examiner has not put forth any evidence which would support her position that the
angiogenesis products described in the specification would not have been recognized
by those of ordinary skill in the art to possess the functional characteristics described
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