Appeal No. 2006-1035 Page 15
Application No. 09/925,140
which compounds have the desired characteristic recited in the claims, not simply a
description of methods by which those skilled in the art can test compounds to see if
they are encompassed by the claims. Because the instant specification provides no
description of which DNAs encoding amino acid sequences at least 90% identical to
SEQ ID NO:1 encode naturally occurring sequences, the instant specification does not
provide the required description.
Appellants also argue that Eli Lilly is distinguishable from the instant case, in that
the nucleic acids in that case “were defined on the basis of functional characteristics,”
while “the claims at issue in the present application define polynucleotides in terms of
chemical structure.” Appeal Brief, pages 12-14.
We are not persuaded by this argument. Although the claimed genus of DNAs is
defined in part by structure, it is also defined by the nonstructural characteristic of
encoding a naturally occurring amino acid sequence. Thus, the specification must
describe the claimed genus sufficiently to allow those skilled in the art to distinguish the
claimed DNAs from those that are structurally distinct, and also from those that encode
non-naturally occurring amino acid sequences at least 90% identical to SEQ ID NO:1.
We have considered the other arguments that Appellants raised in response to
this rejection but do not find them persuasive. For the reasons discussed above, the
rejection of claims 3, 6, 7, 9, 11, and 12 for lack of adequate written description is
affirmed.
Summary
We affirm the rejection of claims 3-7, 9, 11, and 12 for nonenablement and the
rejection of claims 3, 6, 7, 9, 11, and 12 for lack of adequate written description.
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