Appeal No. 2005-0147
Application No. 10/203,081
I. Written description
The examiner argues that the claimed method involves the use of a genus of
proteins which (i) originate from viruses; (ii) have at least 50% sequence similarity with
SEQ ID NO:2; and (iii) are capable of inducing caspase activation in a vertebrate cell.
Answer, p. 3. The examiner points out that the specification discloses fifteen (15)
proteins which have from 62%-87% sequence similarity with SEQ ID NO:2. Id. The
examiner further argues that two searches of the NCBI database which she conducted
at year two and year three after the filing of the present application did not uncover any
viral reaper proteins having at least 50% sequence similarity with SEQ ID NO:2, other
than proteins from the family Bunyaviridae. Id., p. 4. The examiner still further argues
that if proteins meeting the claim limitations exist in other viral families, the specification
does not “reasonably convey that Appellants [sic, appellant] know of them or possessed
them.” Id. The examiner still further argues that
. . . considering then [sic, the] limited range of examples, contrasted with the
broad scope of “viral reaper proteins” and the unpredictability of discovery of
similar proteins in other families of virus, it is maintained that the specification
does not reasonably convey possession of the full scope of “viral reaper proteins”
recited in the claims [emphases added]. Id.
In order to satisfy the written description requirement of 35 U.S.C. § 112, the
application must reasonably convey to one skilled in the art that the applicant was in
possession of the claimed subject matter at the time the application was filed.
Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d 1111, 1117 (Fed. Cir.
1991)(“The invention is, for purposes of the ‘written description’ inquiry, whatever is now
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