Appeal No. 2005-0908 Page 5
Application No. 09/261,329
of numerous representative members of the genus, in sufficient detail so that one
of skill in the art would recognize that Applicants had invented the claimed
subject matter.” Appeal Brief, page 5. We agree, and the rejection is reversed.
First, as to function, the claims require that the cellulase have
endoglucanase activity. The examiner does not argue, however, that the
specification does not describe the functional characteristics or how to determine
those characteristics.
Second, as to structure, the claims are drawn to a modified cellulase,
wherein the parent cellulase is the cellulase of SEQ ID NO:5, and wherein the
amino acid at position 119, wherein each position is numbered according to the
cellulase of SEQ ID NO:1, is substituted with a histidine. The examiner contends
that “[b]ecause ‘comprising’ is open language, and the claim allows for an
undefined number of substitutions in addition to Q119H, [it thus] reads on any
structure that is not necessarily homologous with SEQ ID NO: 5.” Examiner’s
Answer, page 3. As noted above with respect to the construction of the claim,
however, the claim requires that the skilled practitioner start with a cellulose
having the sequence of SEQ ID NO: 5. Moreover, that statement ignores the
limitation that the modified cellulose has endoglucanase activity—thus the claim
sets forth complete or partial structure, i.e. SEQ ID NO. 5 coupled with disclosed
1 We note also that the examiner required appellants to elect a single disclosed species for
prosecution on the merits. See Paper No. 21. Appellants elected with traverse the cellulose of
SEQ ID NO: 5, mutated at the position corresponding to position 119 in SEQ ID NO: 1. The
rejections under 35 U.S.C. § 112, first paragraph, for lack of adequate written description and
lack of enablement appear to be applicable to the genus, and not merely the elected species.
Upon return of the application, the examiner should clarify the subject matter that has been
examined, not only for purposes of 35 U.S.C. § 112, first paragraph, but also as to the prior art.
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