Appeal No. 2003-1805 Page 5
Application No. 09/079,892
that “[a] written description of an invention involving a chemical genus, like a description
of a chemical species, ‘requires a precise definition, such as by structure, formula, [or]
chemical name,’ of the claimed subject matter sufficient to distinguish it from other
materials” Id. at 1567, 43 USPQ2d at 1405. The court also stated that
a generic statement such as ‘vertebrate insulin cDNA’ or ‘mammalian
insulin cDNA,’ without more, is not an adequate written description of the
genus because it does not distinguish the genus from others, except by
function. It does not specifically define any of the genes that fall within its
definition. It does not define any structural features commonly possessed
by members of the genus that distinguish them from others. One skilled
in the art therefore cannot, as one can do with a fully described genus,
visualize or recognize the identity of the members of the genus. A
definition by function, as we have previously indicated, does not suffice to
define the genus because it is only an indication of what the gene does,
rather than what it is.
Id. at 1568, 43 USPQ2d at 1406. The court concluded that “naming a type of material
generally known to exist, in the absence of knowledge as to what that material consists
of, is not a description of that material.” Id.
Finally, the court addressed the manner by which a genus of cDNAs might be
described. “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 genus.” Id.
In reviewing this rejection, we note that the examiner has not rejected claim 8
under this section of the statute. Claim 8 reads:
8. An isolated and purified polynucleotide comprising a naturally occurring
polynucleotide sequence having at least 90% sequence identity to the polynucleotide of
SEQ ID NO:4, wherein said naturally occurring polynucleotide sequence encodes a
polypeptide having glutamine-fructose-6-phosphate amidotransferase activity.
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