Appeal No. 2003-1805 Page 6
Application No. 09/079,892
As seen, claim 8 differs from claim 33 b) which is the focus of the examiner’s
written description rejection in that it adds the limitation that the naturally occurring
polynucleotide sequence encodes a polypeptide having glutamine-fructose-6-
phosphate amidotransferase activity. Since the examiner has conceded that a claim
having the scope of claim 8 complies with the written description requirement of 35
U.S.C. § 112, we do not find that the lack of a statement of function in claim 33 b)
means that that portion of the claim lacks written descriptive support.
Claim 33 b) defines a genus of polynucleotides by way of two significant
qualifiers. First, the polynucleotide of claim 33 b) must be “naturally occurring.”
Second, the polynucleotide of claim 33 b) must be “at least 90% identical to the
polynucleotide sequence of SEQ ID NO:4.” As explained in Lilly, a genus of
polynucleotides can be described by a representative number of polynucleotides
sharing common structural features which constitute a substantial portion of the genus.
The examiner is correct in his analysis that claim 33 b) includes so-called nonfunctional
alleles. However, those nonfunctional alleles must be “naturally occurring” and be at
least “90% identical to the polynucleotide sequence of SEQ ID NO:4.” In our view,
these two limitations adequately describe the genus of polynucleotides encompassed
by claim 33 b) without that claim further including a functional limitation.
We understand the examiner’s concern that one may not recognize that a
polynucleotide sequence having 90% identity with that of SEQ ID NO: 4 is “naturally
occurring.” However, that concern is more properly raised under a rejection under 35
U.S.C. § 112, second paragraph, rather than the written description requirement of the
first paragraph.
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