Appeal No. 2002-2030 Page 14
Application No. 09/294,663
recombinant DNA is an obvious form of DNA, since the combination of a gene
with other DNA sequences (promoters, plasmid vector sequences, etc.) with
which it is not naturally found allows the DNA to be expressed in a greater variety
of cells and in greater quantities than found in nature. Recombinant DNA is the
basis of the entire biotechnology industry. Thus, recombinant DNA comprising a
particular DNA sequence is not patentably distinct from the DNA sequence itself.
Similarly, instant claim 10 is directed to an expression vector that is a
recombinant plasmid. This claimed product is an obvious species of the
“expression vector” recited in the ‘558 patent’s claim 6. Expression vectors are
either plasmids or viruses; since a plasmid is one of only two options, a plasmid
expression vector is not patentably distinct from a generic expression vector.
In addition, instant claim 7 is generic to the ‘558 patent’s claim 3. That is,
claim 7’s recitation of the “DNA sequence encoding a Trichoplusia ni IIM protein”
encompasses the ‘558 patent’s sequences comprising SEQ ID NO’s 1 or 2, as
well as sequences encoding SEQ ID NO’s 3 and 4. “[A] later genus claim
limitation is anticipated by, and therefore not patentably distinct from, an earlier
species claim.” Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 971, 58 USPQ2d
1869, 1880 (Fed. Cir. 2001).
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