Appeal No. 1999-1708
Application 08/731,320
The examiner argues that (Answer, page 3):
Everard et al. disclose the cloning of mannose 6-phosphate reductase
(M6PR) from celery. They teach the construction of cDNA library prepared
from poly(A)-RNA extracted from newly, fully expanded leaves and the
isolation of a specific M6PR-specific clone, ... They also teach the screening
of the cDNA library with M6PR-specific antisera, ...
The examiner acknowledges that Everard does not disclose the DNA of SEQ ID
NO:1, but indicates that the invention remains anticipated because the nucleic acid
sequence of SEQ ID NO:1 is an “intrinsic property of the gene taught by the reference”.
While appellants readily admit that the cDNA nucleotide sequence encoding M6PR
is an intrinsic property of the gene, they argue that Everard does not enable the claimed
DNA sequence as it does not disclose the claimed DNA sequence. Reply Brief, page 9.
Appellants argue that, at best, Everard teaches that a cDNA clone was isolated that
produced a polypeptide capable of reacting with an antibody made against authentic
M6PR.
A reference does not "describe" an invention within 35 USC 102, and thus is not an
anticipation of the invention, unless that single reference contains sufficient disclosure to
put the invention in the hands of the public. In re Outtrup, 531 F.2d 1055, 189 USPQ 345
(CCPA 1976); In re Coker, 59 CCPA 1185, 463 F.2d 1344, 175 USPQ 26 (1972); In re
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