Appeal No. 2005-1422 Page 14
Application No. 09/997,522
a T7G. In all, we find no requirement in claim 12 that any particular “common
structural feature” be present in the claimed polynucleotide variant.8
Further, assuming arguendo, claim 12 was limited to T7G receptors, as
discussed above T7Gs encompass a large genus of receptors, which according
to appellants’ specification (page 2), “are related to other T7Gs by their seven
hydrophobic domains which span the plasma membrane and form a bundle of
antiparallel α helices.” However, contrary to appellants’ assertion (Brief, page
42), there is no evidence on this record that the genus of T7G receptors can be
defined in terms of the chemical structure of SEQ ID NO:1 and/or SEQ ID NO:2.
To that end, there is no evidence on this record that the entire genus
encompassed by claim 12 can be defined in terms of the chemical structure of
SEQ ID NO: 1. In this regard, there is no requirement in claim 12 that the seven
hydrophobic domains used to characterize T7Gs be retained in the claimed
variant. Accordingly, contrary to appellants’ assertion (Brief, page 43), claim 12
does “describe a genus which could be characterized as ‘highly variant.’”
“A written description of an invention involving a chemical genus, like a
description of a chemical species, ‘requires a precise definition, such as by
structure, formula, [or] chemical name,’ of the claimed subject matter sufficient to
8 In this regard, we disagree with appellants’ assertion (Reply Brief, page 12), “[t]he claimed
polynucleotide variants are described in terms of their common structural features (e.g., differing
from the amino acid sequence of SEQ ID NO:2 by a substitution of one amino acid residue
and/or an insertion of 1-5 amino acid residues and/or a deletion of 1-5 amino acid residues), and
in terms of other features such as occurrence in nature.” We note, however, that with the
exception of its “occurrence in nature,” the variant of claim 12, part b does not require any of the
other “common structural features” asserted by appellants. Regarding the requirement that the
variant occur in nature, we note that numerous polynucleotides are naturally occurring, and
exhibit no common structural features. There is simply no evidence on this record, or
requirement in claim 12, that the claimed variant exhibit any “common structural feature” in
common with SEQ ID NO:1.
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