Appeal No. 2006-1035 Page 9
Application No. 09/925,140
tissues which are cancerous” is completely inadequate to support an assertion that the
protein “play[s] a role in . . . cancer.” The evidence of record does not support the
asserted utility of SDHH variants “in assays to detect the presence of metabolism
disorders or cancer.”
The uses on which Appellants rely for enablement are not specific and
substantial utilities, as required by § 101. We therefore affirm the rejection for lack of
enablement.
3. Written description
The examiner also rejected claims 3, 6, 7, 9, 11, and 12 under 35 U.S.C. § 112,
first paragraph, on the basis that the specification does not provide an adequate written
description of the claimed polynucleotides. The examiner acknowledged that the
specification discloses one polypeptide having serine dehydratase activity (SEQ ID
NO:1, encoded by SEQ ID NO:2) but concluded that the specification does not
adequately describe the claimed polynucleotides encoding naturally occurring
polypeptides at least 90% identical to SEQ ID NO:2. Examiner’s Answer, page 8.
The examiner reasoned that the structures of the claimed variants is not defined
because the level of knowledge in the art does not provide any indication of how the
single disclosed species (SEQ ID NO:1) is representative of other naturally occurring
variants; thus, the specification’s disclosure does not allow the skilled artisan to envision
the structure of the claimed polynucleotides, and a person of skill in the art would not
conclude that Appellants were in possession of the claimed invention as of the filing
date. Id., pages 8-9.
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