Appeal No. 2004-2319 Page 9
Application No. 09/915,694
These factors suggest that claim 12 uses the term “polynucleotide” as a
synonym for DNA, rather than using it in its usual sense of encompassing both
DNA and RNA. However, construing part (b) of the claim as limited to DNA
presents its own problems. If part (b) of claim 12 were construed to encompass
only “naturally occurring [DNA] sequence[s] at least 95% identical to the [DNA]
sequence of SEQ ID NO:2”, that part of the claim would very likely define a
compound that does not exist.
The DNA shown in the specification’s SEQ ID NO:2 is a cDNA sequence.
See, working examples I, II and III (headed “THP1PLB01 cDNA Library
Construction,” “Isolation and Sequencing of cDNA Clones,” and “Homology
Searching of cDNA clones and Their Deduced Proteins,” respectively).
cDNA sequences are not naturally occurring. They are laboratory-made
DNA copies of naturally occurring messenger RNA (mRNA) sequences. The
only naturally occurring DNA sequence that encodes the protein of SEQ ID NO:1
is a genomic sequence. That genomic sequence is then transcribed by the cell
into an RNA equivalent that is processed and eventually translated into the
polypeptide of SEQ ID NO:1. The processing steps required to generate an
mRNA from a genomic DNA include removal of intervening sequences, or
introns.
Virtually all human genes include introns. Thus, those skilled in the art
would expect that the naturally occurring gene encoding the polypeptide of SEQ
ID NO:1 would be interrupted by several introns. As a result, those skilled in the
art would expect that, more likely than not, no naturally occurring DNA would be
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