Appeal No. 2005-0147
Application No. 10/203,081
claimed”).
First, we note that the examiner has only rejected those claims which are
directed to the use of viral reaper proteins having at least 50%, and at least 75%,
sequence similarity with SEQ ID NO:2, and which are capable of inducing caspase
activation in a vertebrate cell. The examiner’s approach to determining whether or not
the specification provides an adequate written description of the claimed invention has
been to search protein databases and look for other proteins within the scope of the
claim. Having found none, other than those described in the specification, she then
argues that if there were some, then the appellants did not possess them at the time the
application was filed. This approach is not legally sound. The written description inquiry
focuses on whether the specification reasonably conveys to one skilled in the art
whether the applicant invented the claimed subject matter. Thus, the relevant inquiries
are: what is the appellant’s claimed invention? What is now claimed? Vas-Cath Inc. v.
Mahurkar, 935 F.2d at 1563, 19 USPQ2d at 1117. As stated above, the claimed
invention is directed to the use of proteins having specific structural and biological
properties. To that end, we point out that our appellate, reviewing court has held that in
some cases, the written description requirement might be satisfied if there is a
correlation between the structure of a compound and its function. University of
Rochester v. G.D. Searle & Co., 358 F.3d 916, 925, 69 USPQ2d 1886, 1893 (Fed. Cir.
2004); Enzo Biochem Inc. v. Gen-Probe Inc., 296 F.3d 1316, 1324, 63 USPQ2d 1609
(Fed. Cir. 2002). Given the claims in the present case (methods involving the use of
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