Appeal No. 2002-1630 Page 9
Application No. 09/175,713
explained why the polynucleotides of claims 6-9 are not adequately described in
the specification.
Claims 1-5, 10-14, 17, and 18 present a closer question. As noted above,
these claims are not limited to polynucleotides that encode chemokines that have
been modified at their amino terminus; claim 5, for example, also encompasses
an amino-terminal-modified chemokine that “has itself been derived from a
chemokine by any kind of alteration, addition, insertion, deletion, mutation,
substitution, replacement, or other modification.” Thus, we do not agree with
Appellants’ position (Appeal Brief, page 10) that the claims are limited to
chemokines having known sequences, modified at amino-terminus.
We do, however, agree with Appellants that the examiner has not shown
claims 1-5, 10-14, 17, and 18 to be inadequately described. Again, Enzo
provides the applicable standard. The Enzo court held that an adequate
description could be provided by disclosing, for example, “complete or partial
structure, other physical and/or chemical properties, functional characteristics
when coupled with a known or disclosed correlation between function and
structure, or some combination of such characteristics.” 296 F.3d at 1324, 63
USPQ2d at 1613.
Here, the claims encompass both known chemokines and chemokines
that are “derived from” the known chemokines, modified at the amino terminus.
This claim scope, however, does not render the specification’s description
inadequate. The claim limitation requiring that the claimed DNA encode a
“chemokine” requires that the encoded protein have chemotactic activity. See
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007