Appeal No. 2004-2201 Page 4
Application No. 09/788,476
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.
Both appellants and the examiner believe that the written description issue raised
in this rejection is similar to the issue raised in Example 9 of the training materials
issued in conjunction with the USPTO written description guidelines. See, “Synopsis of
Application of Written Description Guidelines,” at 35, available at
http://www.uspto.gov/web/menu/written.pdf. The hypothetical claim which is the subject
of Example 9 of the Guidelines reads as:
an isolated nucleic acid that specifically hybridizes under highly stringent
conditions to the complement of the sequence set forth in SEQ ID NO:1,
wherein said nucleic acid encodes a protein that binds to a dopamine
receptor and stimulates adenylate cyclase activity.
We first note that the hybridization conditions set forth in claim 1 on appeal are
stated to be “high stringency.” Specification, page 25, lines 3-4. The examiner’s
reasoning as to why the present fact situation is not analogous to that set forth in
Example 9 of the Guidelines is as follows:
In the hypothetical claim 1 of Example 9 in the Guidelines, the structure
of the claimed genus encodes a protein with the recited function. In other
words, the recited function is dictated by the chemical structure of the
claimed genus.
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