Appeal No. 2007-0079 Page 11
Application No. 10/159,749
B. Guidance and working examples:
As discussed above, appellants’ specification provides thirty examples of
deletion mutations within the scope of the claimed invention. In addition,
appellants’ specification provides assay methods to determine whether a deletion
mutation has the requisite activity. See e.g., specification, pages 11, 12, 19 and
20.
C. Nature of the invention, predictability, and the state of the prior art:
Enablement is determined as of the application filing date. In re Brana,
51 F.3d 1560, 1567 n.19, 34 USPQ2d 1436, 1441 n.19 (Fed. Cir. 1995). This
application is a continuation of Application No. 09/070,229 (now the Harland
patent), which is a continuation of Application No. 08/795,501, filed February 5,
1997 (now abandoned). Accordingly, the effective filing date of appellants’
claimed invention is February 5, 1997.
The examiner relies on Skolnick, Vukecevic, Tischer and Kopchick to
support the rejection of record. While Skolnick is a post-filing date reference, we
have elected to consider it among our deliberations. According to the examiner
(Answer, bridging paragraph, pages 10-11), Skolnick teaches that “binding and
receptor function cannot be reliably predicted from protein sequence homology. .
. .” In addition, the examiner finds that Vukicevic teaches that the OP-1 family of
TGF-beta “induces metanephrogenesis whereas closely related TGF-beta family
members-BMP-2 and TGF-beta1-have no effect on metanephrogenesis under
identical conditions. . . .” Id. Similarly, the examiner finds that Tischer teaches
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