Appeal No. 2004-2319 Page 5
Application No. 09/915,694
to the polynucleotide sequence of SEQ ID NO: 2. In addition, the complete
structure of the polypeptide of SEQ ID NO: 1 has been described, and the genus
limited to polypeptides comprising a naturally occurring amino acid sequence at
least 95% identical to the amino acid sequence of SEQ ID NO: 1. While the
examiner asserts that the specification provides no disclosure of any particular
structure to function/activity relationship in the single disclosed species, the
examiner has not adequately explained and/or provided evidence to support that
assertion. Thus, the rejection of claims 3, 6, 7, 9 and 12 under 35 U.S.C. § 112,
first paragraph, for lack of adequate written description, is reversed.
Enablement
Claims 3, 6, 7, 9 and 12 stand rejected under 35 U.S.C. § 112, first
paragraph, on the grounds that the claims contain subject matter that was not
described in the specification in such a way as to enable one skilled in the art to
which it pertains, or with which it is most nearly connected, to make and/or use
the invention.
According to the rejection:
The claimed invention encompass[es] [sic] any isolated
polynucleotide encoding any polypeptide comprising any naturally
occurring amino acid sequence that is at least 95% identical to the
amino acid sequence of SEQ ID NO: 1 (claim 3) and any isolated
polynucleotide comprising any naturally occurring polynucleotide
sequence that is at least 95% identical to the nucleotide sequence
of SEQ ID NO: 2 (claim 12).
Examiner’s Answer, page 4.
The rejection contends that while the specification provides guidance for
an isolated polynucleotide consisting of SEQ ID NO: 2, it “does not teach the
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