Appeal No. 2004-2319 Page 10
Application No. 09/915,694
95% identical to SEQ ID NO:2 because the parts of the naturally occurring gene
that are identical to SEQ ID NO:2 would be interrupted by introns that are not
part of the cDNA sequence of SEQ ID NO:2.
The naturally occurring gene that encodes the polypeptide of SEQ ID
NO:1 would only fall within the scope of part (b) of claim 12 if it has introns that
comprise 5% or less of its sequence. If the naturally occurring gene contains
greater than 5% introns, it would appear that there is no naturally occurring DNA
sequence that is 95% identical to SEQ ID NO:2. Thus, if part (b) of claim 12 is
construed as being limited to DNA, it is overwhelmingly likely to be a nullity. It
would add nothing to the scope of the claim.
On the other hand, if part (b) of claim 12 were construed to encompass
both DNA and RNA, in addition to the ambiguities discussed above it would
present issues of enablement that have not been discussed on the record. That
is, if the claim encompasses both DNA and RNA, and if the corresponding
genomic DNA does not contain an anomalously small amount of intron DNA, the
only “naturally occurring” polynucleotides that would be 95% identical to SEQ ID
NO:2 would be mRNAs (which are processed to excise introns).
Claim 12 is directed to an “isolated” polynucleotide, but the specification
provides no guidance on how to isolate the particular mRNA corresponding to
SEQ ID NO:2. Thus, if part (b) of claim 12 is construed to encompass both DNA
and RNA, then for the reasons discussed above, the DNA aspect is probably a
nullity and it is unclear whether the specification provides adequate guidance to
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007