Appeal No. 2005-0908 Page 3
Application No. 09/261,329
According to the rejection, the use of “comprising” “allows for an undefined
number of substitutions in addition to Q119H and reads on any structure that is
not necessarily homologous with SEQ ID NO: 5.” Examiner’s Answer, page 3.
The examiner asserts further that “[t[he specification teaches the structure
of only a single representative species of said genus, the modified
endoglucanase from Thielavia terrestris having the sequence of SEQ ID NO:5
with the single substitution Q118H corresponding to the substitution Q119H in
SEQ ID NO:1.” Id. The genus encompassed by the claims, however, according
to the examiner, “comprises variants additionally mutated at any of said 200
amino acid residues,” and that “the specification fails to describe any other
representative species by any identifying characteristics or properties other than
the functionality of being a modified cellulase having endoglucanase activity.” Id.
at 4. The examiner concludes “[g]iven this lack of description of representative
species encompassed by the genus of claims, the specification fails to sufficiently
describe the claimed invention in such full, clear, concise, and exact terms that a
skilled artisan would recognize that applicants were in possession of the claimed
invention.”
The burden is on the examiner to set forth a prima facie case of
unpatentability. See In re Glaug, 283 F.3d 1335, 1338, 62 USPQ2d 1151, 1152
(Fed. Cir. 2002). The Court of Appeals for the Federal Circuit, our reviewing
court, has addressed the issue of what constitutes adequate written description
for claims drawn to a sequence. In Enzo Biochem, Inc. v. Gen-Probe Inc., 296
F.3d 1316, 63 USPQ2d 1602 (Fed. Cir. 2002), the court adopted a portion of the
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007