Appeal No. 2005-1422 Page 9
Application No. 09/997,522
Claims 6 and 7:
Claims 6 and 7 stand rejected under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over claims 4 and 5 of
U.S. Patent No. 5,686,597. Appellants acquiesce to this rejection and assert that
a Terminal Disclaimer will be filed upon an indication of allowable subject matter.
Brief, page 47. Accordingly, we affirm the rejection of claims 6 and 7 under the
judicially created doctrine of obviousness-type double patenting as being
unpatentable over claims 4 and 5 of U.S. Patent No. 5,686,597.
Written Description:
Claims 3, 6, 7, 9, 12, 13 and 58 stand rejected under the written
description provision of 35 U.S.C. § 112, first paragraph. According to appellants
(Brief, page 5), “[a]ll of the claims on appeal are grouped together,” with regard to
this ground of rejection. Since all claims stand or fall together, we limit our
discussion to representative independent claim 12. Claims 3, 6, 7, 9, 13 and 58
will stand or fall together with claim 12. In re Young, 927 F.2d 588, 590, 18
USPQ2d 1089, 1091 (Fed. Cir. 1991).
According to the examiner (Supplemental Answer, page 7), a
polynucleotide encompassed by generic claim 12 which is a “naturally occurring
human variant[ ] of SEQ ID NO: 1 … would have one or more nucleic acid
substitutions, deletions, insertions and/or additions to the polynucleotide of SEQ
ID NO: 1….” According to appellants’ specification (page 4), “nucleotide
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