Appeal No. 2006-0298 Page 3
Application No. 10/021,955
57. A method of identifying an individual suspected of having myelinopathy or
being a carrier of myelinopathy, comprising the steps of:
obtaining from said individual a sample comprising nucleic acid; and
assaying said sample for an alteration in a periaxin polynucleotide,
wherein the presence of the alteration identifies said individual as having
periaxin-associated myelinopathy or being a carrier of periaxin-associated
myelinopathy.
Claims 1-7, 35-40 and 42-61 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement, as containing
subject matter that was not described in the specification in such a way as to
enable one skilled in the art to which it pertains, or with which it is most nearly
connected, to make and/or use the invention.
VACATUR AND REMAND
The board serves as a board of review, not a de novo examination
tribunal. See 35 U.S.C. § 6(b) (“The [board] shall, on written appeal of an
applicant, review adverse decisions of examiners upon applications for
patents.”). The burden is on the examiner to set forth a prima facie case of
nonpatentability. See In re Alton, 76 F.3d 1168, 1175, 37 USPQ2d 1578, 1581
(Fed. Cir. 1996).
We initially note that the claims in the application were subject to a
restriction requirement, including the election of a single SEQ ID NO. and an
election of species of a particular mutation. See Office Action mailed February
19, 2003, especially page 5. In response, Appellants elected “the species SEQ
ID NO: 76 as the specific nucleotide sequence for examination purposes only,”
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