Appeal No. 2002-2030 Page 8
Application No. 09/294,663
expression in the midgut of invertebrates, chitin binding activity and
strong association with the peritrophic membrane, and specific
binding with the IIM antibody.
Id. Appellants also argue that these structural features, together with the
specification’s disclosure of the presence of cross-reacting proteins in other
insect species, constitutes a description of a representative number of species
from the claimed genus. Appeal Brief, pages 18-19.
This argument is not persuasive. Claim 1 is directed to transgenic plants
comprising a generic IIM-encoding gene. The structural features that Appellants
rely on are those of the T. ni IIM proteins. Even if we assume, for the sake of
argument, that the specification adequately describes a genus of IIM proteins,
such a description would not support the instant claims. It is well-established that
the amino acid sequence of a protein does not describe the DNA sequence of
the gene encoding it. See, e.g., Lilly, 119 F.3d at 1566, 43 USPQ2d at 1405
(“Example 6 provides the amino acid sequence of the human insulin A and B
chains, but that disclosure also fails to describe the cDNA.”). Thus, structural
features of IIM proteins cannot be relied on to describe the genus of IIM-
encoding genes recited in claim 1.
We therefore affirm the rejection of claim 1 for lack of an adequate written
description in the specification. Claims 6 and 9 fall with claim 1.
2. Enablement
The examiner also rejected claims 1, 6, and 9 as nonenabled. The
examiner acknowledged that the specification is enabling for transgenic plants
comprising an IIM-encoding cDNA from Trichoplusia ni, but concluded that the
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