Appeal No. 2005-0258 Page 5
Application No. 09/768,877
were within the scope of the invention as conceived by Appellants
at the time the application was filed.
We note that the recitation -- “amino acids 1-47 of SEQ ID NO:2” -- was not part
of the originally filed claims. Instead, this limitation was added to claims 19 and
53 in the amendment filed January 21, 2003.
In response, appellants assert (Brief, page 13), “[t]he phrase ‘amino acids
1-47 of SEQ ID NO:2’ is described in the specification in such a way as to
reasonably convey to one skilled in the relevant art that the inventors, at the time
the application was filed, had possession of the claimed invention.” Specifically,
appellants direct our attention to page 29, line 24 of their specification wherein
exon 1 of calpain 10 is described as “Exon 1 nt 1235-1515 (cds 1375-1515),”
wherein the abbreviation “nt” stands for nucleotide positions relative to SEQ ID
NO:1. Id. According to appellants (Brief, bridging paragraph, pages 13-14), “one
of ordinary skill in the art would recognize that the coding region of exon 1, which
is set forth in SEQ ID NO:1 and encodes the exemplary polypeptide of SEQ ID
NO:2, corresponds to the amino acids 1-47 of calpain 10.”
The examiner agrees (Answer, page 19) that the nucleotide sequence of
exon 1 as disclosed on page 29 of appellants’ specification encodes amino acids
1-47 of SEQ ID NO:2. The examiner, however, finds (id.), “[a]ppellants have not
indicated which section of the specification discloses practicing the claimed
method with a polypeptide comprising amino acids 1-47 of SEQ ID NO:2 as a
preferred embodiment.”
We disagree. According to appellants’ specification (page 30), “[t]here are
a number of calpain 10 isoforms that result from alternative splicing of the
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