Appeal No. 2007-0057
Application No. 10/174,586
“95.9% identity to claimed SEQ ID NO:32. Therefore, Mao et al.
anticipates the claimed invention.” Examiner’s Answer, page 7.
We will reverse this rejection. Claims 25-28 are directed to
polypeptides having a specified degree of identity to SEQ ID NO:32 and
having “thioredoxin protein activity.” As discussed above, the evidence of
record shows that SEQ ID NO:32 is unlikely to have the same activity as
thioredoxin. The Examiner has provided no evidence or scientific reasoning
to support a conclusion that the polypeptide disclosed by Mao is likely to
have such an activity. Therefore, the evidence does not support a conclusion
that the polypeptide disclosed by Mao meets all the limitations of claims 25-
28. The rejection based on Mao is reversed.
6. ANTICIPATION BY RUBEN
Claims 25-29, 36, and 37 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Ruben. In the Examiner’s Answer, the Examiner provided
the following citation for Ruben: “Ruben et al. WO 98/04825.” Page 4. In
the Form PTO-892 that accompanied the Office action mailed Nov. 18,
2004, however, Ruben is cited as “WO 98/40483.” In their brief, Appellants
direct their arguments to the reference cited in the Examiner’s Answer,
which does not appear to be in the official Image File Wrapper.
Since it is unclear from the record (1) what reference the Examiner
intends to rely on; and (2) whether Appellants had proper notice of the basis
of the rejection and an opportunity to respond to it, we will vacate the
rejection based on Ruben.
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