Appeal No. 2005-1422 Page 12
Application No. 09/997,522
They are related to other T7Gs by their seven hydrophobic
domains which span the plasma membrane and form a bundle of
antiparallel α helices.
On reflection, appellants’ specification does not identify, or disclose a naturally
occurring human variant of the polynucleotide sequence of SEQ ID NO: 1. At
best, appellants’ specification suggests that the claimed variant may encode a
member of the large family of T7G receptors, one of which is encoded by the
polynucleotide of SEQ ID NO: 1.
Against this backdrop, we note that the examiner finds (Supplemental
Answer, page 7),
the scope of the claims includes numerous structural variants, and
the genus is highly variant because a significant number of
structural differences between genus members is permitted. The
specification and claims do not provide any guidance as to what
changes are made to SEQ ID NO:1 … to be considered a naturally
occurring human variant…. Structural features that could
distinguish compounds in the genus from others in the
polynucleotide … class are missing from the disclosure. No
common structural attributes identify the members of the genus.
The general knowledge and level of skill in the art do not
supplement the omitted description because specific, not general,
guidance is what is needed. Since the disclosure fails to describe
the common attributes or characteristics that identify members of
the genus, and because the genus is highly variant, SEQ ID NO: 1
… alone … [is] insufficient to describe the genus.
In response, appellants assert (Brief, page 37), “[v]ariants of SEQ ID NO:
1 and SEQ ID NO:2 are described in the specification at, for example, page 4,
lines 30-32; page 5, lines 22-25; page 5, line 30 to page 6, line 11; page 7, lines
17-23; and page 8, lines 14-29.” With regard to variants of a polynucleotide
sequence, as discussed above, the cited portions of the specification do not refer
to “naturally occurring human variants,” but instead address “recombinant
nucleotide variants.” In addition, as defined in appellants’ specification at page 7,
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