Ex Parte Baker et al - Page 8

              Appeal No. 2007-0057                                                                  
              Application No. 10/174,586                                                            

              redox regulating activities.  Therefore, those activities cannot be relied on as      
              a basis for PRO270’s patentable utility.                                              
                    Appellants have asserted no utility for PRO270 that is not based on             
              electron transfer and redox regulation.  Since the evidence shows that                
              PRO270 is unlikely to exhibit those activities, we agree with the Examiner            
              that the specification does not disclose a patentable utility for the claimed         
              polypeptides.  The rejections of claims 25-32 and 35-37 under 35 U.S.C.               
              §§ 101 and 112, first paragraph, for lack of utility are affirmed.                    
              3.  WRITTEN DESCRIPTION                                                               
                    Claims 25-32 and 35-37 stand rejected under 35 U.S.C. § 112, first              
              paragraph, as lacking an adequate written description in the specification.           
              The Examiner reasons that the specification does not adequately describe the          
              claimed genus of polypeptides at least 80% similar to SEQ ID NO:32 and                
              possessing thioredoxin protein activity, because the specification discloses          
              only a single polypeptide and does not demonstrate that it “actually                  
              possesses the ability to affect reduction-oxidation activity.”  Examiner’s            
              Answer, pages 6-7.                                                                    
                    We agree with the Examiner’s reasoning and conclusion.  Claim 25,               
              which is representative of the claims rejected for inadequate written                 
              description, is directed to the genus of polypeptides that are at least 80%           
              identical to SEQ ID NO:32 and that have thioredoxin protein activity.                 
              However, for the reasons discussed above, the evidence of record shows that           
              PRO270 itself (i.e., SEQ ID NO:32) is unlikely to have the activity of                
              thioredoxin.  The specification does not describe any variants of SEQ ID              
              NO:32 that would be expected to possess an activity that is not possessed by          


                                                 8                                                  

Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  13  Next

Last modified: September 9, 2013