Appeal No. 2005-0147
Application No. 10/203,081
proteins disclosed in the specification having from 62% to 87% sequence similarity with
SEQ ID NO:2. However, claims 1 and 4 are directed to viral reaper proteins having as
little as 50% sequence similarity with SEQ ID NO:2 and which are capable of inducing
caspase activation in a vertebrate cell. To satisfy the written description requirement,
the application “must describe an invention and do so in sufficient detail that one skilled
in the art can clearly conclude that ‘the inventor invented the claimed invention.’”
Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966
(Fed. Cir. 1997); In re Gostelli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir.
1989). Thus, the examiner may wish to consider whether the specification describes a
viral reaper protein having the characteristics set forth in claim 1 in sufficient detail, and
with reasonable clarity, such that those skilled in the art can conclude that he was in
possession of the claimed invention, or whether the appellant had “just a mere wish or
plan for obtaining” said protein. Fiers v. Revel, 984 F.2d 1164, 1171, 25 USPQ2d 1601,
1606 (Fed. Cir. 1993). In this regard, attention is directed to the courts holding with
respect to the DNA sequences set forth in Fiers. The examiner may wish to consider
whether viral reaper proteins having less than 62% sequence similarity with SEQ ID
NO:2 require “more than a mere statement that they are part of the invention.” Cf.,
University of California v. Eli Lilly and Co., 119 F.3d 1559, 43 USPQ2d 1398 (Fed. Cir.
1997). That is, does the specification reasonably convey to those skilled in the art that
the inventor was in possession of a method of using a protein having the claimed
characteristics at the time the application was filed? Vas-Cath Inc. v. Mahurkar, 935
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