Appeal 2007-1069
Application 10/334,990
10 (Table 1)), shows an experiment which results in the accumulation of the
intermediate (CaTrp) (Specification 7: 31 to 8: 3).
Because the Specification reasonably apprises those skilled in the art
of the scope of the claimed invention, we conclude that the claims are in
conformance with § 112, second paragraph. We reverse the rejection of
claims 17-19, 21-24, 26-28, 30-38, and 42-46.
Rejection under § 112, first paragraph, for lack of written description
Claims 17-19, 21-24, 26-28, 30-38, 42, 45, and 46 stand rejected
under 35 U.S.C. § 112, first paragraph, as lacking an adequate written
description of the claimed invention (Answer 4; Br. 9). The Examiner states
that the claims are directed to “a microorganism transformed with a genus of
DNAs encoding hydantoinases, hydantoin racemases, and/or carbamoylases,
wherein all the DNAs can have any structure” (Answer 4). Relying on
University of California v. Eli Lilly and Co. (“Lilly”), 119 F.3d 1559,
43 USPQ2d 1398 (Fed. Cir. 1997), the Examiner states that
the written description requirement for a claimed genus may be
satisfied through sufficient description of a representative
number of species by actual reduction to practice, reduction to
drawings, or by disclosure of relevant, identifying
characteristics, i.e., structure or other physical and/or chemical
properties, by functional characteristics coupled with a known
or disclosed correlation between function and structure, or by a
combination of such identifying characteristics, sufficient to
show that Applicant was in possession of the claimed genus.
. . . .
In the instant case, there is no structural limitation
recited with regard to all the members of the genus of
polynucleotides recited.
(Answer 5.)
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