Appeal No. 2002-2030 Page 6
Application No. 09/294,663
In this case, the specification does not describe generic IIM genes in
accordance with either of the above standards. The specification discloses two
IIM-encoding cDNAs from Trichoplusia ni in full, structural detail (SEQ ID NO:1
and SEQ ID NO:2). The specification provides no description of any other IIM-
encoding nucleic acids.
The specification thus does not describe any structural features common
to members of the genus of IIM-encoding genes. The specification’s disclosure
of the sequence of the cDNAs encoding IIM14 and IIM22 from T. ni (SEQ IDs 1
and 2) does not suffice. The specification provides no description of the
structural features that are common to both T. ni genes, and that are also shared
by other IIM genes encompassed by claim 1. Since the specification describes
no structural features that are common to the members of the genus, it
necessarily does not describe structural features that “constitute a substantial
portion of the genus,” per Lilly.
The specification also does not describe a “representative number” of
species within the genus to constitute a description of the full genus. Under
either the Lilly or Enzo standard, the specification describes only two species of
IIM genes – SEQ ID NO:1 and SEQ ID NO:2. Appellants have provided no
evidence to show that the chemical structures of these two species, both isolated
from Trichoplusia ni, are in any way representative of the structures of the full
genus of IIM genes encompassed by claim 1.
The evidence, in fact, is to the contrary. The specification itself discloses
that, out of twenty species of insects tested (not including T. ni (cabbage looper)),
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