Appeal No. 2005-1169 Page 7
Application No. 09/900,063
present in a pig having SEQ ID NO: 3; determining the alleles of other markers
for genes known to affect litter size; and selecting for animals with favorable
combinations of alleles and against those carrying unfavorable combinations.”
As noted by the examiner, claims 1 and 36 thus
encompass a genus of nucleic acids which comprise prolactin
receptor polymorphisms which are not disclosed in the
specification. The genus includes an enormous number of
polymorphisms for which no written description is provided in the
specification. This large genus is represented in the specification
by only the particularly named four polymorphisms for which data is
provided demonstrating an association with the phenotypic trait,
litter size. Thus, applicant has express possession of only four
particular polymorphisms, in a genus which comprises hundreds of
millions of different possibilities. Here, no common element or
attributes of the sequences are disclosed which would permit
selection of sequences as polymorphisms. . . . No structural
limitations or requirements which provide guidance on the
identification of sequences which meet these functional limitations
of associating a polymorphism with litter size is provided. Further,
these claims expressly encompass all the different possible allelic
variants including insertions, deletion, substitutions and
transversions at thousands of different sites. No written description
of alleles, of upstream or downstream regions containing additional
sequence, which are associated with any phenotype are described
in the specification.
Examiner’s Answer, pages 3-4. We agree with the examiner’s analysis, and
affirm the written description rejection as to claims 1-3, 8-11, 16, 17, 19, 20, 26
and 36-38.
Appellants argue that claim 1 contains a structural feature “by requiring
that the genotype assayed for is variation present in the prolactin receptor gene
as set forth in, or therein, of SEQ ID NO: 3.” Appeal Brief, page 12. Appellants
argue further that the claim requires a particular function by requiring “that the
screened animal’s prolactin receptor gene variant is associated with an increased
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