Appeal No. 2005-0258 Page 11
Application No. 09/768,877
but we find that distinction to be unhelpful to Rochester’s position. It is irrelevant;
the statute applies to all types of inventions. We see no reason for the rule to be
any different when non-genetic materials are at issue.”).
In this case, the examiner finds (Answer, page 8, emphasis removed),
“[o]nly one human and one mouse gene have been disclosed as encoding
calpain 10 polypeptides….” According to the examiner (id.), “the human calpain
10 polypeptides [(isoforms)] disclosed in the specification are splice variants
encoded by a single gene, i.e. CAPN10.” Therefore, as we understand the
examiner’s argument (Answer, bridging sentence, pages 7-8), while appellants’
specification discloses the complete primary structure (amino acid sequence) of
a mouse and various isoforms of human calpain 10 polypeptide, produced by
alternative splicing of a single human calpain gene, these species are insufficient
to describe the entire genus of calpain 10 polypeptides encompassed by the
method of claim 51.
In response, appellants assert (Brief, page 14) that they have disclosed
“an exemplary full length of [sic] calpain 10 and its various exon regions that are
differentially spliced to create different calpain 10 isomers.” We recognize that
there is no dispute on this record that appellants have disclosed a “full length”
human calpain 10 polypeptide and various human calpain 10 isomers. We also
recognize that appellants make no assertion on this record that sequences of
other representative species of calpain 10 are disclosed in their specification.
Accordingly, as we understand appellants’ arguments the disclosure of the
human calpain 10 polypeptide isoforms, when coupled with a correlation between
Page: Previous 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 Next
Last modified: November 3, 2007