Appeal No. 2002-1630 Page 17
Application No. 09/175,713
“stringent hybridization conditions.” See page 22. Thus, the polynucleotides
encompassed by claims 6-9 do not include the “potentially infinite number of
variants,” Examiner’s Answer, page 6, that are encompassed by claim 5 and that
result in a requirement of undue experimentation.
We agree with Appellants that the set of modified cytokines encompassed
by claims 6-9 is narrower than those encompassed by claim 5. The examiner
has not adequately explained why undue experimentation would have been
required to practice the smaller genus of chemokines recited in claims 6-9. We
therefore reverse the rejection of claims 6-9.
Other Issues
1. Claims 17 and 18
Claims 17 and 18 read as follows:
17. A composition comprising an isolated polynucleotide encoding an amino-
terminal-modified chemokine, wherein the chemokine binds the fusin/CXCR4
chemokine receptor
18. A composition comprising an isolated polynucleotide encoding an amino-
terminal-modified chemokine, wherein the amino-terminal-modified chemokine is
a more effective inhibitor of HIV infection than the corresponding unmodified
chemokine.
Thus, claims 17 and 18 are directed to genera of polynucleotides, defined
by function rather than structure. The Federal Circuit has held that “A description
of a genus of cDNAs may be achieved by means of a recitation of a
representative number of cDNAs, defined by nucleotide sequence, falling within
the scope of the genus or of a recitation of structural features common to the
members of the genus, which features constitute a substantial portion of the
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