Appeal No. 2005-1745
Application No. 09/161,680
which applicant regards as the invention.
II. Claims 12-27 stand rejected under 35 U.S.C. § 112, first paragraph, as “failing to
comply with the written description requirement.” Answer, p. 3.
III. Claims 12-27 stand rejected under 35 U.S.C. § 112, first paragraph, for failing to
provide an enabling disclosure of “methods using all enzymes, all substrates, and all
possible mutator strains.” Answer, p. 4.
IV. Claims 24-27 stand rejected under 35 U.S.C. § 112, first paragraph, as “failing to
comply with the written description requirement.” Answer, p. 4.
We affirm Rejection IV, reverse Rejections I and II, and need not reach the merits
of Rejection III. In addition, we enter a new ground of rejection pursuant to 37 C.F.R. §
41.50(b) for all the claims.
Background
Enzymes are highly-specific protein catalysts. Two properties of enzymes are
their catalytic power and their specificity. The present invention is said to be directed to
methods of making enzymes which have a new catalytic activity using recombinant
DNA technology. Specifically, the invention involves the use of a strain of Escherichia
coli (E. coli) known as XL1-Red which is able to generate mutants at a greater rate than
the wild-type parent. The E. coli strain is said to generate “single-point mutations
randomly within a cloned gene of interest . . . with just overnight growth.” Greener, p.
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