Appeal No. 2006-0102 Page 12
Application No. 09/732,439
“[n]either [a]ppellants’ specification nor the prior art identify any conserved
sequences within the broad genus of any proline biosynthetic enzyme[s] or any
gene encoding it, wherein such conserved sequences are correlated with the
involvement in proline biosynthesis.” Stated differently, the evidence of record
fails to recite the structural features common to the members of the genus, which
features constitute a substantial portion of the genus. In addition, as discussed
above, appellants’ specification fails to provide a recitation of a representative
number of cDNAs, defined by nucleotide sequence, falling within the scope of the
claimed genus. Since the specification does not describe the claimed DNAs
adequately for those skilled in the art to distinguish the claimed DNAs from other
DNAs, the specification does not adequately describe the claimed DNAs under
the standard of Eli Lilly.
Adding to the complexity of the claimed invention, the examiner finds (id.)
that according to claim 59, the recombinant DNA must encode an enzyme that
has “the capacity to be expressed in a plant in an amount effective to confer
tolerance or resistance to a reduction in water availability.” According to the
examiner (id.), appellants’ “specification does not indicate which genes encoding
which enzymes would have this capacity.”
“The ‘written description’ requirement serves a teaching function, . . . in
which the public is given >meaningful disclosure in exchange for being excluded
from practicing the invention for a limited period of time.’” University of
Rochester v. G.D. Searle & Co., Inc., 358 F.3d 916, 922, 69 USPQ2d 1886, 1891
(Fed. Cir. 2004) (citation omitted). Another “purpose of the ‘written description’
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