Appeal 2007-0628
Application 10/225,082
Appellants argue that “the ‘related markers’ [are] all characterized by
their structural relationship to a parent marker, the structure of which is well
known” (Br. 12) and that “[a]s the proteins recited in the claims are all
known proteins having known sequences, the identity of various ‘related’
polypeptides (e.g., the corresponding ‘precursor’ and ‘NT-pro’ forms) may
be easily ascertained from . . . a standard database” (id. at 13-14).
We agree with Appellants that the Examiner has not shown that the
“related markers” recited in the claims are not adequately described. The
Examiner argues that the Specification’s definition of related markers is
“inclusive and nonlimiting and thus is not limited to fragments” (Answer 9).
We disagree. “Related marker” is expressly defined to mean “fragments of a
particular marker that may be detected as a surrogate for the marker itself”
(Specification 5).
Appellants have asserted that all the proteins recited in the claims are
known in the art, and the Examiner has not disputed that assertion. Thus, the
“related markers” recited in the claims are merely fragments of known
proteins. We agree with Appellants that the sequences of known proteins,
and fragments of them, are readily available to those skilled in the art.
“[T]here is no per se rule that an adequate written description of an
invention that involves a biological macromolecule must contain a recitation
of known structure.” Falkner v. Inglis, 448 F.3d 1357, 1366, 79 USPQ2d
1001, 1007 (Fed. Cir. 2006). “Indeed, [such a requirement], if one existed,
would serve no goal of the written description requirement.” Id. at 1368,
79 USPQ2d at 1008.
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