Appeal No. 2004-2356 Page 11
Application No. 09/833,740
partial structure for the human homolog of the GLP-2R promoter region. The
specification only provides about 20% of the sequence, thus without the
approximately 80% of the nucleic acid sequence not disclosed, we cannot say
that the promoter as claimed has been described. In re Wallach, 378 F.3d 1330,
1334, 71 USPQ2d 1939, 1942-43 (Fed. Cir. 2004). Moreover, as has been
already discussed above, the specification does not provide a functional assay
that can be correlated to structure. Therefore, until appellants obtain a complete
nucleotide sequence, “they have no more than a wish to know the identity” of the
claimed promoter region. Wallach, 378 F.3d at 1335, 71 USPQ2d at 1943.
Thus, the written description rejection as to claim 9 is also affirmed.
With respect to claim 10, appellants argue that “[t]he specification
expressly sets forth at least 1.5 kb of the nucleotide sequence of the murine
GLP-2R promoter region in Figures 1 and SEQ ID No: 1.” Appeal Brief, page 19.
Moreover, appellants thus contend that “the specification provides a partial
structure for the claimed promoter regions in Figures 1 and 7b and SEQ ID NO:
1, discloses another physical property of the claimed promoter regions by
teaching the location of the promoter region within the known murine GLP-2R
gene, and discloses the correlation between the nucleotides at that location and
their function as a tissue-specific promoter.” Id. at 20.
Again, we do not find appellants’ arguments to be convincing. Claim 10 is
drawn to the DNA construct of claim 1, “wherein the promoter region comprises
from 1.5 kb to 10.6 kb of the murine GLP-2R receptor promoter.” As noted by
the examiner, see Examiner’s Answer, page 6, the specification does not
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007