Appeal No. 2005-1745
Application No. 09/161,680
examiner, “the art defines substrate specificity by kcat/ KM; the ‘greater than zero’ phrase
in the specification is unclear. Claim 1, the first 4 lines2 describing this method are
unclear in view of this definition.” See, the final office action, mailed January 4, 2002, p.
6.
In response, the appellants filed an amendment to the claims on June 10, 2002,
canceling all pending claims and adding new claims 12-23. The newly added claims 12-
23 were directed to a “method for altering the substrate specificity of an enzyme.” The
examiner continued to reject the claims as being indefinite in the recitation of “substrate
specificity.”
The examiner’s next response (Office action, mailed December 10, 2002, p. 5),
stated:
. . . As noted for the previously pending claims that had been rejected on this
basis, the specification loosely defines “substrate specificity” in the following
sentence from page 4, lines 1-3: “The alteration in the substrate specificity
reduces the KM or increases the kcat, or both, i.e. the ratio of kcat/ KM becomes
greater than zero.” As the Examiner has previously noted, the art defines
substrate specificity by kcat/ KM; the “greater than zero” phrase in the specification
is unclear. Moreover, on page 6, the specification seems to equate “altered
2 The first 4 lines of original claim 1 read as follows:
1. A method for altering the substrate specificity of enzymes, which
comprises carrying out the following steps:
a) introducing a DNA which comprises a copy of the gene coding
for the enzyme into the Escherichia coli strain
11
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