Appeal No. 2005-1745
Application No. 09/161,680
which they were previously unable to convert, because the affinity of the enzyme
for the substrate was too low (i.e., high KM) and/or the rate of conversion ( kcat)
too low (i.e., = high KM) and/or the rate of conversion (= kcat) of the enzymes was
too low. In these cases, the ratio kcat/ KM is zero or almost zero, i.e., catalysis
does not occur. The generation of a new catalytic activity reduces the KM or
increases the kcat, or both. A catalytic reaction occurs. The enzyme converts the
new substrate after the mutagenesis.
Contrary to the appellants’ arguments, we find that each of the aforementioned
amendments introduced new matter to the specification. 35 U.S.C. § 132. In addition,
because the appellants also amended the claims so that they are now directed to “[a]
method of generating a new catalytic activity in an enzyme,” we find that they contain
subject matter which was not described in the specification, as originally filed. 35 U.S.C.
§ 112, first paragraph.
Accordingly, Rejection II is reversed and we have set forth new ground of
rejection pursuant to 37 C.F.R. § 41.50(b) for claims 12-26. Attention is directed to our
discussion, infra.
Rejection III
Given our disposition of Rejection II, we need not reach the merits of Rejection III.
Rejection IV
The examiner contends that the specification, as originally filed, does not provide
written descriptive support for the concept of using the claimed method “to generate a
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