Appeal No. 2002-0427 Page 7
Application No. 08/179,656
before the variation would “affect the reactivity of the protein.” The specification
does not even describe how much effect on the protein’s “reactivity” is
considered to be “affect[ing] the reactivity.”
Thus, the specification does not describe the claimed genus of proteins in
terms that would allow those skilled in the art to recognize that the inventors
invented what is claimed. See In re Wertheim, 541 F.2d 257, 262, 191 USPQ
90, 96 (CCPA 1976). (“It is not necessary that the application describe the claim
limitations exactly, . . . but only so clearly that persons of ordinary skill in the art
will recognize from the disclosure that appellants invented processes including
those limitations.”).
In terms of the Enzo test, the instant specification does not provide the
complete structure of any of the claimed proteins, since the only complete
structure recited in the specification is that of SEQ ID NO:17, the only sequence
specifically excluded from the instant claims. Nor does the specification provide
any partial structures for any of the claimed proteins, except for some
(uncharacterized) proteins that might differ from SEQ ID NO:17 only by addition
of one or more amino acids at either end. None of the other proteins defined by
the claims—those that differ from SEQ ID NO:17 by one or more additions,
substitutions, or deletions—would have the structure of SEQ ID NO:17 as their
complete or partial structure. Nor does the specification provide physical or
chemical properties of the claimed proteins that would adequately define them to
those skilled in the art. Finally, the specification describes functional properties
of the claimed proteins (specifically, that they “ha[ve] immunoreactivity” and differ
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