Appeal No. 2005-1169 Page 9
Application No. 09/900,063
Third, claims 1 and 54 are not limited to pigs. The polymorphisms
disclosed in the specification have only been correlated to litter size in pigs.
Thus, the specification fails to provide adequate written description for the
method of claims 1 and 54, which encompass any polymorphism that may occur
in SEQ ID NO: 3 that may be correlated to litter size in any mammal.
Appellants assert moreover that they have disclosed “at least” three
polymorphisms that may be correlated to litter size. Appeal Brief, page 13.
Appellants argue further that the specification discloses how the skilled artisan
may identify polymorphisms within the prolactin gene set forth in SEQ ID NO: 3.
See id. Finally, appellants contend that “[w]hile every polymorphism present in
the [prolactin receptor] gene may not be associated with an increase in litter size,
this does not negate written description as there is ample description of how to
locate polymorphisms and how to correlate them to phenotypic traits.” Id. at 14.
Appellants’ argument that the specification teaches one skilled in the art to
locate polymorphisms and correlate them to a phenotypic trait such as litter size
relates to enablement, and not written description. And as noted by the Court of
Appeals for the Federal Circuit, the written description requirement under 35
U.S.C. § 112, first paragraph, is separate and distinct from the enablement
requirement. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19
USPQ2d 1111, 1116-17 (Fed. Cir. 1991).
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