Appeal No. 2004-1369 Page 3
Application No. 08/966,233
Claims 3, 11-15, 22, 24-34 and 39-42 stand rejected under 35 U.S.C.
§ 112, first paragraph, as based on a specification which fails to adequately
describe the claimed invention.2
We affirm the utility rejection under 35 U.S.C. § 101 as lacking utility and
§ 112, first paragraph. Having disposed of all claims on appeal, we do not reach
the merits of the rejection under the written description provision of 35 U.S.C.
§ 112, first paragraph3.
BACKGROUND
“The present invention relates, in general, to DNA segments encoding
proteins of the transforming growth factor superfamily. In particular, the present
invention relates to a DNA segment encoding GDF-1….” Specification, page 1.
“The GDF-1 gene was isolated by virtue of its homology to the transforming
growth factor beta (TGF- β) superfamily.” Brief, page 2. Accordingly, appellant
asserts (id.), “[p]otential uses for GDF-1 as a therapeutic and diagnostic tool are
suggested based on the known biological activities of other members of this
superfamily….”4
2 We note that the examiner appears to have inadvertently included canceled claims 5-10 (see
Brief, page 2) as part of this rejection. See Answer, page 15. We consider this to be a
typographical error and have not included these claims as part of our deliberation.
3 For clarity, we note that appellant characterizes this issue as comprising two parts, (1) a written
description rejection of claims 3, 11-15, 22 and 24-42; and (2) a new matter rejection of claims of
claims 39-42. See Brief, pages 5-6. According to the examiner (Answer, page 3), however,
[c]laims 3, 11-15, 22, 24-34, and 39-42 are rejected under 35 U[.]S[.]C[. §] 112[,
first paragraph] with respect to written description. Claims 39-42 were particularly
addressed with respect to new matter; however, this was not a separate ground
of rejection. In view of appellant’s arguments, this rejection has been withdrawn
with respect to claims 35-38.
4 In this regard, we note that according to the examiner (Answer, page 6), “the specification
discloses that the activities of the members of the TFG-β [sic] superfamily vary quite widely. (See
specification at pages 1-2 and 12-15.)[.]”
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