Appeal No. 2005-0258 Page 15
Application No. 09/768,877
specification and figures, it would be clear to one of skill in the art that the
[a]ppellants had possession of the claimed invention at the time of filing sufficient
to practice the invention.” To the contrary, as we understand it, appellants had
possession of the structurally-distinct calpains 10a-10h as diagrammatically
illustrated in figures 1A-1H (SEQ ID NOs:2, 4, 6, 8, 10, 12, 14 and 16), and the
mouse calpain 10 set forth in SEQ ID NO:18. See specification page 8. As the
examiner points out (Answer, page 8), “[t]he genus of polypeptides …
[encompassed by] the claimed method is a large and structurally variable genus.”
The specification fails to provide any correlation between the structures of these
structurally-distinct calpains and any functional activity. Accordingly, it is our
opinion that the application does not describe structural features common to
members of the genus, either expressly or via a known correlation between
structure and function. The evidence of record supports the examiner’s position
that the description of calpain 10 polypeptides is inadequate to describe the full
genus of calpain 10 polypeptides encompassed by claim 51.
While the inventions at issue in Lilly and Enzo were DNA constructs per
se, the holdings of those cases are also applicable to the instant claim. Claim 51
is directed to a method, rather than a product, but carrying out the claimed
method requires the use of a calpain 10 polypeptide. In our opinion, the instant
specification does not provide an adequate description of the genus of calpain 10
polypeptides encompassed by the method of claim 51, per Lilly, by describing
“structural features common to the members of the genus, which features
constitute a substantial portion of the genus.” Nor does the specification
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