Appeal No. 2005-0908 Page 9
Application No. 09/261,329
Moreover, the claims require that the modified enzyme have
endglucanase activity. The examiner again does not provide any evidence that
one skilled in the art would not be able to test for that activity. Here, the
examiner has not provided “acceptable evidence or reasoning which is
inconsistent” with the specification, and therefore has not met the initial burden of
showing nonenablement, and the rejection is reversed.
Finally, claims 204-206 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and distinctly
claim the subject matter that appellants regard as the invention.
According to the rejection:
Claims 204-206 are drawn to a modified cellulase comprising
a substitution Q199H “in the amino acid SEQ ID NO:5, wherein
each position is numbered according to the amino acid sequence of
the cellulase of SEQ ID NO:1”. It is confusing to define a position
number in one specific sequence (SEQ ID NO:5) using another
sequence (SEQ ID NO:1) as opposed to the direct numbering the
position in SEQ D NO:5. It is unclear what limitation is imposed on
the scope of the claims by using said indirect numbering via SEQ
ID NO:1. The specification discloses the alignment of SEQ ID NOs:
1 and 5 (pages 7-12, Table 1, columns 1 and 5, respectively). SEQ
ID NO:1 has 202 amino acids whereas SEQ ID NO:5 has 201
amino acids. As shown in Table 1, SEQ ID NO:5 does not have an
amino acid at the position corresponding to position 49 of SEQ ID
NO:1. Thus, position Q118 in SEQ ID NO:5 corresponds to
position Q119 in SEQ ID NO:1.
Examiner’s Answer, page 7 (emphasis in original).
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007