Appeal No. 95-2041
Application 07/814,220
Within the genus of possible eleven amino acid sequences
claimed thus, is the species consisting of eleven serines. In
addition, the language in the claims includes multiple eleven
amino acid sequences which are devoid of alanine. The protein
from winter flounder described in Figure 1 contains only one
serine and contains 26 alanines of the 38 amino acids. This
disparity exemplifies the breadth of the indicated proteins
that are to be encoded by the claimed genus of DNA compounds
and the protein that they are to be "modeled after".
We note that the words "modeled after the antifreeze
polypeptide found in winter flounder" were added to the claims
for the first time via an amendment filed December 23, 1991,
Paper No. 10. On page 10 of this submission, at line 4
applicants state, "This addition was suggested by the
Examiner...." Applicants then refer to a declaration of one
of the inventors (Caceci), previously submitted in the course
of prosecution, and a publication by Kao et al., for a
discussion of the differences between winter flounder, ocean
pout and sea raven AFPs. However, such does not remove the
statutory requirement that the claims particularly point out
and distinctly claim the subject matter which applicants
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