Appeal No. 2003-1993
Application No. 09/470,526
those limitations.” (citations omitted). See also Purdue Pharma L.P. v. Faulding, Inc.,
230 F.3d 1320, 1323, 56 USPQ2d 1481, 1483 (Fed. Cir. 2000) (“In order to satisfy the
written description requirement, the disclosure as originally filed does not have to
provide in haec verba support for the claimed subject matter at issue.”).
We apply the relevant law above to the facts before us. In the present case, the
examiner argues that the “specification does not set forth what specific structural or
physical features define the claimed isolated nucleic acids and transgenic cells, plants
and seeds.” Answer, page 4. The examiner argues that one skilled in the art “could
not predict the structure and function of isolated nucleic acids comprising a wee1
polynucleotide having at least 80% identity to the entire coding region of SEQ ID NO:1
or a polynucleotide complementary thereto, or cells, plants and seeds transformed
therewith. The physical features of the claimed isolated nucleic acids and transgenic
cells, plants, and seeds cannot be ascertained in the absence of information about the
functional activities of these nucleic acids. Additionally, the specification does not
disclose the effect of incorporating the claimed isolated nucleic acids into the genome
of a cell or plant.” Id.
We find the examiner's argument that one skilled in the art could not predict the
structure and function of isolated nucleic acids comprising a wee1 to be confusing in
the context of a written description rejection, as predictability is not the legal standard or
test for such rejections. However, as best we can understand the examiner's argument,
the examiner appears to argue that the specification does not describe a wee1
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