Appeal No. 2004-2319 Page 2
Application No. 09/915,694
12. An isolated polynucleotide selected from the group consisting of:
a) a polynucleotide comprising the polynucleotide sequence of SEQ
ID NO: 2,
b) a polynucleotide comprising a naturally occurring polynucleotide
sequence at least 95% identical to the polynucleotide sequence of
SEQ ID NO: 2,
c) a polynucleotide having a sequence complementary to a
polynucleotide of a),
d) a polynucleotide having a sequence complementary to a
polynucleotide of b) and
e) an RNA equivalent of a)-d).
The examiner relies upon the following references:
Attwood et al. (Attwood), “Which craft is best in bioinformatics?,” Computer and
Chemistry, Vol. 25, pp. 329-339 (2001)
Ponting, “Issue in predicting protein function from sequence,” Briefing in
Bioinformatics, Vol. 2, No.1, pp. 19-29 (2001)
Claims 3, 6, 7, 9 and 12 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement. In
addition, the claims stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the enablement requirement. After careful review of the
record and consideration of the issues before us, we reverse both rejections. We
do, however, enter a new ground of rejection under 35 U.S.C. § 112, second
paragraph over claim 12.
DISCUSSION
Written Description
Claims 3, 6, 7, 9 and 12 stand rejected under 35 U.S.C. § 112, first
paragraph, as containing subject matter that was not described in the
specification in such a way as to reasonably convey to one skilled in the relevant
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