Appeal No. 2004-2319 Page 3
Application No. 09/915,694
art that the inventors, at the time the application was filed, had possession of the
claimed invention.
According to the rejection:
The claimed invention encompass[es] [sic] any isolated polynucleotide
encoding any polypeptide comprising any naturally occurring amino acid
sequence that is at least 95% identical to the amino acid sequence of SEQ ID
NO: 1 (claim 3) and any isolated polynucleotide comprising any naturally
occurring polynucleotide sequence that is at least 95% identical to the nucleotide
sequence of SEQ ID NO: 2 (claim 12).
Examiner’s Answer, page 3.
The rejection contends that the specification provides only a single
representative species—an isolated polynucleotide consisting of SEQ ID NO: 2.
The rejection asserts that “[t]here is no disclosure of any particular structure to
function/activity relationship in the single disclosed species.” Id. The rejection
concludes “[g]iven this lack of additional representative species as encompassed
by the claims, [appellants] have failed to sufficiently describe the claimed
invention, in such full, clear, concise, and exact terms that a skilled artisan would
recognize [appellants] were in possession of the claimed invention.
The written description requirement of 35 U.S.C. § 112, first paragraph,
does not require a description of the complete structure of every species within a
chemical genus. See Utter v. Hiraga, 845 F.2d 993, 998, 6 USPQ2 1709, 1714
(Fed. Cir. 1988) (“A specification may, within the meaning of 35 U.S.C. § 112, ¶
1, contain a written description of a broadly claimed invention without describing
all species the claim encompasses.”).
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