Appeal No. 2002-1630 Page 18
Application No. 09/175,713
genus.” University of California v. Eli Lilly and Co., 119 F.3d 1559, 1568, 43
USPQ2d 1398, 1406 (Fed. Cir. 1997). See also Enzo, 296 F.3d at 1324, 63
USPQ2d at 1613: 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.”
Although we reversed the examiner’s written description rejection (which
included claims 17 and 18), our decision was based only on the examiner’s
rationale for rejecting the claims, which did not separately address claims 17 and
18. If claims 17 and 18 are subject to further examination, the examiner should
consider whether the specification’s description of the claimed genera meet the
standards set out in Lilly and Enzo.
2. Claim 1
Claim 1 is directed to a polynucleotide encoding a modified chemokine,
where the chemokine can be modified by addition of an aminooxypentane
residue. However, the specification discloses that an aminooxypentane residue
is added to the N-terminus of protein by a series of chemical reactions: first, a
serine or threonine residue is converted to an aldehyde; then the aldehyde is
reacted with aminooxypentane to form the desired aminooxypentane-modified
chemokine. Since the aminooxypentane residue is added post-translationally, it
is unclear how an aminooxypentane-modified chemokine can be encoded by a
polynucleotide. It would appear that the polynucleotide encoding an
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