Appeal No. 2005-1383
Application No. 09/364,847
adequate written description of said invention. That is, if one skilled in the art is able to
make and use the enzymes within the scope of the claims based on the teachings of the
specification and what was known in the art at the time of the invention (enablement),
as indicated by the examiner, then it reasonably follows that such person would
understand or recognize said enzymes from the same information source(s) (written
description).
We agree with the examiner that in certain instances, such as those presented
by the facts in the University of California v. Eli Lily and Co., 119 F.3d at 1568, the court
has held that nucleotide sequences are such complex chemical compounds that one
skilled in the art cannot envision the genus of mammalian nucleotide sequences of a
particular gene simply by knowing the nucleotide sequence of a single species.
However, a claim is not unpatentable simply because the “embodiments of the
specification do not contain examples explicitly covering the full scope of the claim
language.” LizardTech Inc., v. Earth Resource Mapping, Inc., 424 F.3d at 1343; see
also, Union Oil Co. v. Atlantic Richfield Co., 208 F.3d 989, 997, 54 USPQ2d 1227, 1232
(Fed. Cir. 2000). As discussed above, a patent application is written for a person of skill
in the art. In re GPAC Inc., 57 F.3d at 1579; Vas-Cath Inc. v. Mahurkar, 935 F.2d at
1563-64. Since the evidence of record demonstrates that the claimed classes of
enzymes were well known in the art (pages 8-10 of the specification; pages 4-8 of the
appellants’ response (Jan. 2, 2003)), we find that one skilled in the art would readily
recognize the enzymes involved in the PHA biosynthetic pathway even if they are
derived from different microorganisms and there are minor differences in the amino acid
sequences. Accordingly, we find that the appellants were in possession of the claimed
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