Appeal No. 2005-0258 Page 4
Application No. 09/768,877
that appellants’ specifically characterize this issue as whether “claims 19 and 53
lack written description under 35 U.S.C. [§] 112, first paragraph for the phrase
‘amino acids 1-47 of SEQ ID NO: 2?’” Brief, pages 4 and 5. Appellants do not
dispute our decision on the merits of this ground of rejection.
Appellants’ Request is directed to our decision on the merits of the third
ground of rejection. The third ground of rejection is a rejection of claims 18-21,
49-51, 53-64, 115 and 116 under the written description provision of 35 U.S.C.
§ 112, first paragraph, as the specification fails to adequately describe the
claimed invention. This ground of rejection differs from the second ground of
rejection because it is not based on the concept of “new matter” but instead
focuses on the failure of appellants’ specification to provide written descriptive
support for the genus of calpain 10 polypeptides set forth in claim 51. See e.g.,
Decision page 8, “the method of claim 51 is open to the use of a calpain 10
polypeptide of any structure from any source. Therefore, the method of claim 51
reads generically on the use of any calpain 10 polypeptide from any source.”
Appellants’ Request does not dispute this construction of claim 51. In addition,
we note that appellants’ statement of the issues, as it appears on pages 4 and 5
of the Brief, specifically characterize this issue as whether “claims 18-21, 49-51,
and 53-64 lack written description under 35 U.S.C. [§] 112, first paragraph for the
phrase ‘calpain 10?’”
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