Appeal No. 2005-0908 Page 6
Application No. 09/261,329
correlation with function, i.e., endoglucanase activity. See Enzo Biochem, 296
F.3d at 1324, 63 USPQ2d at 1613. The examiner argues further that the
specification teaches the structure of only a single representative species of the
genus encompassed by the claims, but, as noted by appellants, see Appeal
Brief, page 5, the specification provides examples of mutations in tables 4-6
found at pages 28-35 of the specification. As the examiner has not supplied any
evidence or reasoning why those mutations are not descriptive of the claimed
modified cellulose, he has failed to meet his burden of establishing a prima facie
case of unpatentability for lack of written description, and the rejection is
reversed.
Claims 204 and 206 also stand rejected under 35 U.S.C. § 112, first
paragraph, “because the specification, while being enabling for a modified
cellulase having endoglucanase activity and the amino acid sequence of SEQ ID
NO: 5 with a single substitution corresponding to a substitution Q119H in SEQ ID
NO:1 (Q119H substitution), does not reasonably provide enablement for a
modified cellulase having endoglucanase activity and an amino acid sequence
comprising substitution Q119H and having an undefined percent identity to SEQ
ID NO:5.” Examiner’s Answer, page 4.
According to the rejection, “[t]he state of the art does not allow the
predictability of the properties based on the structure,” nor does the “specification
. . . teach which residues beside the specifically substituted are responsible for
the resulting properties of the modified cellulase.” Id. at 5. The examiner
contends that as the amino acid sequence of a protein dictates its “structural and
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