Appeal No. 2002-1630 Page 10
Application No. 09/175,713
the specification, page 17. Thus, even if the modified chemokine is derived from
another chemokine, the modified chemokine must still possess the activity of the
wild-type protein. As the examiner herself pointed out, changes in amino acid
sequence have unpredictable effects on protein function. See the Examiner’s
Answer, page 6. Thus, those skilled in the art would reasonably expect that
chemokines that are “derived from” known chemokines would usually have to
share a high degree of sequence similarity to the wild-type chemokine in order to
also share its chemotactic activity.
The Enzo court held that a compound can be described by “complete or
partial structure, other physical and/or chemical properties, [or] 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. The examiner has not adequately explained why the
instant specification does not provide such a description of the claimed
chemokine-encoding polynucleotides.
For the above reasons, we reverse the examiner’s rejection of claims 1-
14, 17, and 18, for inadequate written description.
3. Enablement
The examiner also rejected all of the claims as non-enabled, although she
acknowledged that the specification was enabling for the exemplified species
met-SDF-1β. Examiner’s Answer, page 6. The examiner also conceded that
“generation of modified proteins is standard in the art,” id., so that “one of skill in
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