Appeal No. 2005-0258 Page 3
Application No. 09/768,877
II. Claims 19, 49 and 53 stand rejected under 35 U.S.C. § 112, first
paragraph, as the specification fails to adequately describe the
claimed invention.
III. Claims 18-21, 49-51, 53-64, 115 and 116 stand rejected under
35 U.S.C. § 112, first paragraph, as the specification fails to
adequately describe the claimed invention.
IV. Claims 18-21, 49-51, 53-64, 115 and 116 stand rejected under
35 U.S.C. § 112, first paragraph, as based on an insufficient
disclosure to support or enable the scope of the claimed
invention.
We direct attention to the second and third ground of rejection. The second
ground of rejection is a rejection of claims 19, 492 and 53 under the written
description provision of 35 U.S.C. § 112, first paragraph. At page 6 of the
Answer, the examiner refers to this rejection as “a new matter rejection.” See
also, Decision page 4, wherein the rejection is discussed under the heading “New
Matter.” According to the examiner (Answer, page 7), “there is no indication that
methods using specifically calpain 10 polypeptides which comprise amino acids
1-47 of SEQ ID NO: 2 were within the scope of the invention as conceived by
[a]ppellants at the time the application was filed.” See also, Decision, page 4.
Throughout the statement of this rejection the examiner focuses on “amino acids
1-47 of SEQ ID NO: 2.” Appellants’ statement of the issues, as it appears on
pages 4 and 5 of the Brief, recognizes the examiner’s
focus on the phrase “amino acids 1-47 of SEQ ID NO: 2.” In this regard, we note
2 According to the examiner (Answer, page 6), claims 19 and 53 “encompass a method of
screening for a modulator of calpain 10 function wherein the calpain 10 polypeptide used
comprises amino acids 1-47 of SEQ ID NO:2.” As we understand it, claim 49 is included in this
rejection due to its dependency on claim 19. See id.
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