Appeal No. 2007-0079 Page 3
Application No. 10/159,749
page 4. For clarity, claim 1 of Harland is reproduced below with underlining to
illustrate where the claim differs from claim 1 before us on appeal:
1. A method for reducing morphogen-dependent bone formation of a cell
comprising an extracellular surface in contact with a medium, said
method comprising the step of:
contacting said medium with an antagonist of a bone morphogenic
protein (BMP) selected from the group consisting of human BMP2 and
human BMP4, said antagonist produced exogenously from said cell
and comprising SEQ ID NO:[ ]2, 4, 6, 8 or 9 or a deletion mutant of a
sequence selected from the group consisting of SEQ ID NO:[]2 or 8
wherein said deletion mutant encodes a polypeptide that retains at
least residues 64-179 of SEQ [I]D NO:[ ]2 or residues 28-176 of SEQ
ID NO:[ ]8 and is sufficient to specifically bind and antagonize said
BMP, under conditions whereby said morphogen-dependent bone
formation is reduced; and
measuring a resultant reduction of said morphogen-dependent
bone formation.
According to the examiner (Answer, page 4), “deletion mutants other than
those having residues 64-179 of SEQ ID NO:[ ]2 and 28-176 of SEQ ID NO:[ ]8,
have not been shown to exhibit binding and/or bone morphogen antagonizing
activity.” From this, the examiner asserts (Id.), “[t]he claims thus encompass a
substantial number of variants for which requisite activity for either function is not
established, while both are required.” While the examiner recognizes that pages
11 and 12 of appellants’ specification identify “particular deletion mutants[ ]1 that
exhibit shared structure and function,” the examiner finds “the specification fails
to exemplify any other deletion mutants which exhibit binding and bone
morphogen antagonizing function.” Answer, page 6. Therefore, the examiner
concludes (Id.), “the artisan cannot conclude that a representative number of
species within the full scope of the genus have been provided. Nor can the
1 Specifically, this portion of appellants’ specification refers to SEQ ID NO: 2, residues 24-182 of
SEQ ID NO: 2, residues 54-180 of SEQ ID NO: 2, SEQ ID NO: 8 and residues 12-181 of SEQ ID
NO: 8.
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