Appeal No. 2002-1630 Page 6
Application No. 09/175,713
one of three specified ways, but also including “species comprising additions,
insertions, deletions, mutations, substitutions, and replacements, as well as
amino-terminal additions.” Examiner’s Answer, page 4. The examiner
characterizes the number of chemokines encompassed by the claims as
“potentially infinite.” Id.
In contrast, according to the examiner, the specification discloses the
structure of only four species within the genus, and discloses the functional
characteristics of only one. The examiner concluded that “[t]he disclosure of four
closely related molecules, each a modified form of SDF-1 alpha or beta, and the
functional characteristics of only one, are insufficient to describe the genus.” Id.
Appellants argue that
[t]he chemokines [recited in the claims] . . . were well known in the
art by their common laboratory names long before the filing date of
the instant application. . . . Therefore, coupled with information
known in the art, Appellants have described a procedure of
generating chemokine compositions modified at the amino-terminus
and those of ordinary skill in the art would readily recognize that
Appellants were in possession of the invention as claimed, i.e., a
specifically enumerated list of chemokines having known
sequences that are modified with GroHEK, methionine, or
aminooxypentane at the amino-terminus.
Appeal Brief, pages 9-10.
The examiner “‘bears the initial burden . . . of presenting a prima facie
case of unpatentability.’ . . . Insofar as the written description requirement is
concerned, that burden is discharged by ‘presenting evidence or reasons why
persons skilled in the art would not recognize in the disclosure a description of
the invention defined by the claims.’” In re Alton, 76 F.3d 1168, 1175, 37
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