Appeal No. 2003-1805 Page 4
Application No. 09/079,892
occurring alleles. The general knowledge in the art concerning alleles
does not provide any indication of how one allele is representative of
unknown alleles. The nature of alleles is such that they are variant
structures, and in the present state of the art structure of one does not
provide guidance to the structure of others. Therefore, many functionally
unrelated DNAs are encompassed within the scope of these claims. The
specification discloses only a single species of the claimed genus (i.e. the
sequence encoding SEQ ID NO:2) which is insufficient to put one of skill
in the art in possession of the attributes and features of all species within
the claimed genus. Therefore, one skilled in the art cannot reasonably
conclude that the applicant had possession of the claimed invention at the
time the instant application was filed.
Examiner’s Answer, paragraph bridging pages 3 and 4.
The examiner also
[F]ully acknowledges appellants’ recitation of the structural limitations of
the polynucleotides of claim 33 parts b) and d)-e). However, the
polynucleotides as defined in claim 33 parts b) and d)-e) encompass a
genus of polynucleotides that encompasses widely variant species, some
having the same functions as the polypeptide of SEQ ID NO:1, some
having unknown and distinctly different functions and some possibly
having no function. While one of skill in the art, provided the
polynucleotide sequence of SEQ ID NO:4, may be able to recognize
variants of SEQ ID NO:4 with nucleotide sequence sharing 90% identity,
one cannot recognize which of these variants occurs naturally and is thus
encompassed by the genus of claim 33 part b). Therefore, the skilled
artisan would not be able to recognize a member of the claimed genus of
polynucleotides merely from its structural definition. This enormous genus
will encompass a wide variety of polynucleotides with their own distinct
properties. Because appellants have provided no functional limitation for
the claimed polynucleotides, the single disclosed polynucleotide of SEQ
NO:4 is not representative of the entire genus and one of skill in the art
would not recognize that appellants were in possession of all
polynucleotides comprising a naturally-occurring polynucleotide having at
least 90% identity to SEQ ID NO:4 as encompassed by the claims.
Examiner’s Answer, paragraph bridging pages 11 and 12.
The Federal Circuit discussed the application of the written description
requirement to inventions in the field of biotechnology in University of California v. Eli
Lilly and Co., 119 F.3d 1559, 1568, 43 USPQ2d 1398, 1406 (Fed. Cir. 1997), stating
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007