Appeal No. 2005-1169 Page 10
Application No. 09/900,063
Claims 27 and 54, however, are drawn to methods for identifying a marker
correlated with litter size. The examiner does not address in the rejection how
such screening methods to identify a polymorphism associated with litter size are
not supported by an adequate written description, and we are thus compelled to
reverse the written description rejection as to claims 27 and 54 and the claims
dependent thereon, i.e., claims 28, 29 and 55.
Claims 1-3, 8-11, 16, 17, 19, 20, 26-29, 36-38, 54 and 55 stand rejected
under 35 U.S.C. § 112, first paragraph, on the grounds that the specification,
while being enabling for some polymorphisms in the porcine prolactin receptor
such as the Alu polymorphism, does not reasonably provide enablement for all
polymorphisms including the Msel polymorphism.
The examiner states in the conclusion to the rejection, “the specification
does not provide guidance to overcome art and specification recognized
problems in the use of polymorphisms as prognostic of litter size as broadly
claimed.” Examiner’s Answer, page 9 (emphasis in original). As we have noted
above, the examiner has focused the rejection on the subject matter of claims 1
and 36 and the claims dependent thereon.
Therefore, as the examiner has not addressed the subject matter of claims
27, 28, 29, 54 and 55, i.e., methods for identifying genetic markers associated
with litter size, we are compelled to reverse the enablement rejection as to those
claims. Moreover, because we affirmed the written description
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