Appeal No. 2002-0427 Page 9
Application No. 08/179,656
These arguments are not persuasive. To take Appellants’ last argument
first, SEQ ID NO:17 cannot be “representative of the claimed genus” nor can it
constitute a “representative number” of species of the genus. SEQ ID NO:17 is
expressly not a part of the claimed genus. The members of the claimed genus
are required to differ in sequence from SEQ ID NO:17; thus, SEQ ID NO:17 is
the only sequence that cannot be within the claimed genus. A species cannot be
representative of a genus of which it is not a part.
Second, we do not agree that the specification’s general discussion of
either products of methods provides a description that is adequate to meet the
requirements of 35 U.S.C. § 112, second paragraph. Appellants have pointed to
no specific, structural features that would have been recognized by those of skill
in the art as common to LDGF2 variants “having immunoreactivity” or retaining
the “reactivity” of LDGF2. The specification simply provides no structural
answers to the pertinent questions: what types of amino acid changes can be
made, how many, and in what part(s) of the molecule, without eliminating the
“immunoreactivity” or changing the “reactivity” of LDGF2? Thus, the specification
does not provide a structural description of how the claimed LDGF2 variants
differ from SEQ ID NO:17, and therefore fails to adequately describe the claimed
genus.
The examiner also rejected the claims for failing to meet the enablement
requirement of 35 U.S.C. § 112, first paragraph. Since we have already
concluded that the claims are unpatentable under that section of the statute
because they lack an adequate written description, we need not consider
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