Appeal No. 2005-0908 Page 4
Application No. 09/261,329
Guidelines proffered by the United States Patent and Trademark Office
(USPTO). The court stated that:
The written description requirement can be met by “showing that an
invention is complete by disclosure of sufficiently detailed, relevant
identifying characteristics . . . i.e., complete or partial structure,
other physical and/or chemical properties, functional characteristics
when coupled with a known or disclosed correlation between
function and structure, or some combination of characteristics.
Enzo Biochem, 296 F.3d at 1324, 63 USPQ2d at 1613 (citations omitted).
As an initial matter, we would like to address the construction of claim 204.
The claims recites “[a] modified cellulase, comprising a substitution of the amino
acid at position 119 with H in the amino acid of SEQ ID NO: 5, wherein each
position is numbered according to the amino acid sequence of the cellulase of
SEQ ID NO: 1 and the modified cellulase has endoglucanase activity.” We
construe the claim as requiring starting with a cellulase of SEQ ID NO: 5, in
which the amino acid at position 119 has been replaced with H, but also
encompassing other modifications to the sequence, wherein the modifications
may be substitutions, insertions or deletions, with the proviso that the resulting
cellulose have endoglucanase activity.1
As to the merits of the rejection, Appellants argue that the specification
provides “a precise definition by structure of the genus of modified cellulases
sufficient to distinguish it from other modified cellulases” as well as “a description
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