Ex Parte LEE - Page 14


                 Appeal No.  2004-1369                                                        Page 14                  
                 Application No.  08/966,233                                                                           
                 characterization of the expression patterns and biological properties of GDF-1                        
                 both under normal physiological conditions and during disease states.”                                
                       After what appears to be a comprehensive review of appellant’s                                 
                 disclosure, the examiner finds (Answer, page 15),                                                     
                        the specification does not enable using GDF-1 in any capacity                                  
                        without undue experimentation.  Again, the specification is an                                 
                        invitation to experiment without clear direction or guidance as to the                         
                        particular biological activity to investigate.  Embryogenesis and                              
                        mediation of cell differentiation are broad areas of basic research.                           
                        No tumors nor developmental defects are identified as being                                    
                        associated for any screening or diagnostic methods.  No normal or                              
                        abnormal levels for GDF-1 are disclosed in the specification for any                           
                        cell type or tissue.  No direction or guidance as to particular known                          
                        tumors or known developmental defects to be investigated are                                   
                        provided.                                                                                      
                        In response, appellant presents several different arguments.  We take                          
                 each argument in turn.                                                                                
                 I.  TGF-β activity varies quite widely:                                                               
                        Appellant asserts (Brief, bridging paragraph, pages 7-8) that the examiner                     
                 provides no documentary evidence to support the assertion that the activities of                      
                 the members of the TGF-β superfamily “vary quite widely” and that some                                
                 members of the superfamily have diverse activities in embryonic development                           
                 while others have no role in development.                                                             
                        In response, the examiner finds (Answer, page 19), “[a]ppellant relies                         
                 upon Akhurst et al.”  With reference to page 164-165 of Akhurst, the examiner                         
                 finds (Answer, page 20), Akhurst teach “the evidence would suggest that each                          
                 isoform of TGF-β (i.e. TGF-β1, TGF-β2, and TGF-β3) has a distinct function in                         
                 vivo.”  Further, the examiner notes (Answer, page 6) that appellant’s own                             







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