Appeal No. 2005-1745
Application No. 09/161,680
The appellants stated that because (i) the specification describes the invention “in
terms of substrate/enzyme binding (KM) and rate of conversion (kcat); and (ii) “catalytic
activity is the presently accepted term of art denoting the combined effect of these
factors,”5 the amendments to the specification did not introduce any new matter. The
amendment received April 15, 2003, p. 3.
In response, the examiner dropped the aforementioned rejection under §112,
second paragraph and finally rejected the claims in the office action mailed July 1, 2003.
The appellants then filed an amendment on September 16, 2003,6 amending
claims 12-23; and adding claims 24-27. In addition, the appellants again amended
several sections of the specification. With respect to the aforementioned (p. 3, line 42 p.
4, line 5), the specification was changed to read:
Generation of new catalytic activities in the novel method means that the enzymes
having been subjected to the method are able to convert substrates
5 The appellants argue in the amendment received April 15, 2003, that:
Enzymic activity, according to the Oxford Dictionary of Biochemistry
and Molecular Biology, is “the rate of reaction of substrate that may be
attributed to catalysis by an enzyme (p. 210, see attached excerpt). It is
“now obsolete” and has been superceded by the term “catalytic activity”
(id). Catalytic activity of an enzyme, in turn, is defined as “the property
measured by the increase in the rate of conversion of a specified chemical
reaction that the enzyme produces in a specified assay system. . . . [I]t is .
. . conceptually different from rate of conversion although measured by
and equidimensional with it” (id., p. 97).
6 It appears that the amendment filed on September 16, 2003 was not entered
until November 6, 2003.
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