Appeal No. 2004-1259
Application No. 09/832,355
second peptide portion exhibits less than about 20%, preferably less than 10%, and
more preferably less than 5% amino acid sequence identity to the VEGF peptide
portion and preferably exhibits at least one distinct biological function from that
associated with the VEGF peptide, preferably a function related to angiogenesis, bone
growth, and/or wound healing. Specification, page 18.
35 U.S.C. § 112, first paragraph
Claim 31 stands rejected under 35 U.S.C. 112, first paragraph, as containing
subject matter which was not described in the specification in such a way as to
reasonably convey to one skilled in the relevant art that the inventors, at the time the
application was filed, had possession of the claimed invention.
It is the examiner’s position that (Answer, page 7):
Claim 31 has been amended to recite that the fusion protein comprises an
N-terminal truncated form of HBNF or MK including “at least about 60% of
the wild-type HBNF or MK amino acid sequence.[”] Appellants point to
paragraph [0063] for support for this limitation. However, examination of
that paragraph reveals only disclosure of about “70% or less, more
preferably about 65% or less, and even more preferably about 60% or
less...” There is no disclosure of the now claimed “at least about 60%”,
which is equivalent to '60% or more', which would include species with
greater than 70%, the highest number recited.
It is well settled that persons skilled in this art must reasonably recognize in the
originally filed application a description of the invention defined by the claims which
establishes that appellants was in possession of the invention, including all of the
limitations thereof, as of the filing date. See, e.g., In re Alton, 76 F.3d 1168, 1175-76,
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