Appeal No. 2002-0427 Page 6
Application No. 08/179,656
proteins as well as DNAs. See id. (citing Guidelines’ example of an antibody
defined by its binding affinity). See also id. at 1328-29, 63 USPQ2d at 1616
(“Even if a claim is supported by the specification, the language of the
specification, to the extent possible, must describe the claimed invention so that
one skilled in the art can recognize what is claimed. . . . The disclosure must
allow one skilled in the art to visualize or recognize the identity of the subject
matter purportedly described.”).
In this case, we agree with the examiner that the claimed genus of
proteins is not adequately described in the specification. Claim 1 is directed to a
protein that “consist[s] of Leukocyte Derived Growth Factor 2 (LDGF2),” “ha[s]
immunoreactivity,” and differs from SEQ ID NO:17 by at least one substitution,
deletion, or insertion “which does not affect the reactivity of the protein.” The
specification, however, does not describe in detail any specific protein falling
within the claimed genus. The only specific protein described in the specification
is LDGF2, which has the sequence of SEQ ID NO:17. This protein, however, is
specifically excluded from the scope of claim 1. The specification does not
describe a single protein that differs from SEQ ID NO:17 by even a single amino
acid, in such a way that it “does not affect the reactivity of the protein.”
The specification does not describe the genus of claimed proteins in
general terms. It does not describe where in the protein the deletions,
substitutions, or insertions could be made without “affect[ing] the reactivity of the
protein,” nor does it describe the types of variation that would affect reactivity, or
how much the claimed proteins could vary from in sequence from SEQ ID NO:17
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