Appeal No. 2000-0137 Page 5
Application No.08/646,558
amino acids. That is, unless Lys, Arg, Gly, and Cys were considered to be
“aromatic or hydrophobic” amino acids, Xaa1 could never be Lys or Arg and Xaa2
could never be Gly or Cys, rendering the proviso meaningless. This same
proviso is found in the specification. See, e.g., page 3, lines 13-14.2
The specification confirms that Lys and Cys are considered to be
hydrophobic, and suggests that tyrosine (Tyr) and aspartic acid (Asp) are
considered hydrophobic as well. See page 3, lines 12-13 (“Xaa2 and Xaa3 are
any hydrophobic, L-α-amino acid residue.”), page 4, lines 10-12 (“Xaa2 and Xaa3
are as defined above. Preferably, . . . Xaa2 is . . . Lys, . . . or Asp; and Xaa3 is
. . . Tyr.”), and page 11 lines 19-20 (“Xaa2 and Xaa3 are as defined above.
Preferably, . . . Xaa3 is . . . Cys.”). The specification also states that leucine
(Leu), isoleucine (Ile), valine (Val), methionine (Met), tryptophan (Trp), and
phenylalanine (Phe) are preferred hydrophobic amino acids. See page 3, lines
12-16 (“Xaa2 and Xaa3 are any hydrophobic, L-α-amino acid residue. . . . In a
preferred embodiment, . . . Xaa2 is Leu, Ile, Val, . . . or Met and Xaa3 is Val, . . .
Leu, Trp, or Phe.”).
the claim as a whole is not allowable. If the claims are not allowable as written, the proper course
of action would be to enter a rejection of the claims under the appropriate statute.
2 In the specification, Xaa1 is consistently defined as “any L- or D-α-amino acid residue.” See,
e.g., page 3, line 12, and page 44 (original claim 1). In the claims on appeal, Xaa1 is limited to
being an aromatic or hydrophobic amino acid. When and if the definiteness issue discussed
herein is resolved, the examiner should consider whether the specification provides an adequate
written description of the genus of peptides defined by claim 32, especially the limitation of Xaa1
to aromatic or hydrophobic amino acids. See, e.g., Purdue Pharma L.P. v. Faulding, Inc., 230
F.3d 1320, 1326, 56 USPQ2d 1481, 1486 (Fed. Cir. 2000). (“As Ruschig makes clear, one cannot
disclose a forest in the original application, and then later pick a tree out of the forest and say
‘here is my invention.’ In order to satisfy the written description requirement, the blaze marks
directing the skilled artisan to that tree must be in the originally filed disclosure.”).
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