Appeal 2007-4148
Application 09/148,012
2. WRITTEN DESCRIPTION
Claims 1-9, 12, 15, 16, and 20-22 stand rejected under 35 U.S.C.
§ 112, first paragraph, on the basis that the
claims a[re] drawn to methods which potentially use a universe
of compounds. However, Appellant has only provided written
description of a small number of specific compounds which act
via SR-BI, including estrogen (Example 3 on pages 39-40 of
the specification), adenoviral vector encoding SR-BI (Example
5 on pages 40-45 of the specification), and anti-SR-BI antibody
(Example 8 on pages 55-66 of the specification) to alter
cholesterol levels.
(Answer 3.) The Examiner finds that the Specification does not provide an
adequate written description of the claimed method (id. at 2-3).
We agree with the Examiner that the Specification does not
adequately describe the claimed method. Describing a claim to a method
requires describing the compounds used in the method. See University of
Rochester v. G.D. Searle & Co., 358 F.3d 916, 926 (Fed. Cir. 2004). Here,
claim 1 requires use of a compound that inhibits uptake, binding, or
transport of cholesteryl ester by SR-BI. The Specification therefore must
adequately describe that genus of compounds.
A chemical genus can be described by structural description of a
representative number of the species within the genus or by describing
“structural features common to the members of the genus, which features
constitute a substantial portion of the genus.” University of California v. Eli
Lilly and Co., 119 F.3d 1559, 1569 (Fed. Cir. 1997). The structural
description does not necessarily require disclosure of the compound’s
complete chemical structure:
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