Appeal No. 94-2742
Application 07/792,600
2. Enablement.
Claims 1, 3/1, 4/3/1, 5/1, and 6 through 8 are rejected under 35 U.S.C. § 112, first
paragraph, as being nonenabled.
These claims are directed to either a genus of nucleic acid sequences encoding a
human polymerase " catalytic polypeptide or a DNA sequence which encodes a
polypeptide having an amino acid sequence sufficiently duplicative of that of the human
polymerase " catalytic polypeptide to allow possession of the property of processive DNA
replication. The specification of this application only describes a single DNA sequence
which encodes human polymerase " catalytic polypeptide. As set forth in Amgen, Inc. v.
Chugai Pharmaceutical Co., 927 F.2d 1200, 1213, 18 USPQ2d 1016, 1027 (Fed. Cir.),
cert. denied, 502 U.S. 856 (1991), it is necessary that applicant provide “a disclosure
sufficient to enable one skilled in the art to carry out the invention commensurate with the
scope of his claims. For DNA sequences, that means disclosing how to make and use
enough sequences to justify grant of the claims sought.”
Here, as in Amgen, applicant appears to be in effect, every possible analog of a
gene which encodes human polymerase " catalytic polypeptide on the basis of the
disclosure which describes only that gene.
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