Appeal No. 2005-1745
Application No. 09/161,680
reason why an enzyme may be unable to convert a substrate to a product. However, in
order for the enzyme to be able to convert the substrate to a product, it must, as
discussed above, first bind to the substrate.
The preceding may be “much ado about nothing.” The problem here is that in
trying to rectify this confusion, the appellants changed “alteration of the substrate
specificity” from meaning that an enzyme is enable to convert substrate(s) it previously
could not convert because of said enzyme’s affinity and catalytic activity to “generating a
new catalytic activity” for an enzyme so that it is able to convert substrates it could not
previously convert because of enzyme affinity and rate of conversion. Whether one
statement is more accurate or clear is immaterial, the statements are not equivalent.
The amended way of stating the invention makes it clear, and the appellants
acknowledge in the amendment received on April 15, 2003, p. 3, that the catalytic activity
is not the same as the rate of conversion. The specification, as originally filed disclosed
the alteration of a substrate specificity due, inter alia, to an enzyme previously being
unable to convert said substrate because of a low catalytic activity. As a result of the
amendments, the claims are now directed to a change in catalytic activity which now
encompasses both increase and a decrease in said activity (which according to the
amended specification is due, inter alia, to the enzyme being previously unable to
convert said substrate because of a low rate of conversion). Thus, we find that the
specification does not “convey with reasonable clarity to those skilled in the art that, as
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