Ex Parte Rothschild et al - Page 8


                Appeal No. 2005-1169                                                    Page 8                  
                Application No. 09/900,063                                                                      

                litter size.”  Id.  Appellants conclude that “[t]he claim thereby recites a structural          
                feature which is common to all members of the genus (a specific region of a DNA                 
                sequence) and additionally requires a particular function (causes a phenotypic                  
                difference in litter size).”  Id.                                                               
                       Appellants argue similarly for claim 36 that it contains “the necessary                  
                structural feature by requiring that the alleles which are to be determined in said             
                animal are contained within the prolactin receptor gene of SEQ ID NO: 3,” and                   
                “also requires a particular function in that the alleles to be determined are to be             
                associated with litter size.”  Id.                                                              
                       First, as noted by the examiner, the specification fails to disclose a                   
                representative number of species of polymorphisms present in SEQ ID NO: 3                       
                that are associated with litter size.  See Examiner’s Answer, page 10.  At best,                
                appellants have disclosed three polymorphisms that may be correlated to litter                  
                size, see Appeal Brief, page 13, whereas claims 1 and 36 encompass any                          
                polymorphism that may be correlated to litter size.                                             
                       Second, as also noted by the examiner, while the polymorphisms occur in                  
                SEQ ID NO: 3, the polymorphisms that are disclosed by the specification to be                   
                associated with litter size have no common structural element.  See Examiner’s                  
                Answer, pages 12-13.                                                                            












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