Appeal No. 2004-1259
Application No. 09/832,355
[t]he written description and enablement are not commensurate in scope
with any and all possible non-VEGF peptides with angiogenesis or bone
growth promoting activity. The specification has defined such in a manner
that is so broad that any possible functional equivalent is encompassed.
In addition, the examiner argues that “[m]any of the cytokines listed as being
angiogenic at paragraph [0050] are not recognized in the art as being angiogenic, for
example, TNF alpha is an inflammatory, not an angiogenic cytokine, TGF beta is a cell
growth inhibitor and not an angiogenic cytokine, IGF, while pleiotrophic [sic], is not
considered in the art to be an angiogenic factor, etc.” Id., pages 8-9.
The examiner takes the position that, “[w]ith the exception of the known forms of
angiogenic cytokines, including HBNF, and art recognized derivatives thereof the skilled
artisan cannot envision the detailed chemical structure of the encompassed proteins,
and therefore conception is not achieved until reduction to practice has occurred,
regardless of the complexity or simplicity of the method of isolation.” Answer, page 9.
Appellants argue that, “Section 112, first paragraph, is satisfied by the disclosure
of a representative number of species. A 'representative number of species' means
that the species which are adequately described are representative of the entire genus.
Thus, when there is a substantial variation within the genus, one can describe a
sufficient variety of species to reflect the variation within the genus.” Brief, page 5,
citing MPEP 2163.
The examiner responds, arguing that “given the breadth of the claims, which
when read in view of the specification encompass all functional equivalents of any bone
growth promoting protein or angiogenic protein, coupled with the fact that numerous of
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