Appeal No. 2006-1035 Page 10
Application No. 09/925,140
We agree with the examiner that the instant specification does not describe the
claimed genus of polynucleotides that encode “a naturally occurring amino acid
sequence at least 90% identical to the amino acid sequence of SEQ ID NO:1.” The
specification discloses the amino acid sequence of SEQ ID NO:1 and one DNA
sequence that encodes it (SEQ ID NO:2). That disclosure is adequate to describe all of
the DNA sequences that encode the amino acid sequence of SEQ ID NO:1. See In re
Wallach, 378 F.3d 1330, 1333, 71 USPQ2d 1939, 1942 (Fed. Cir. 2004) (“[T]he state of
the art has developed such that the complete amino acid sequence of a protein may put
one in possession of the genus of DNA sequences encoding it.”).
Claim 3, however, is not limited to polynucleotides encoding the amino acid
sequence of SEQ ID NO:1. Appellants also claim polynucleotides encoding “a naturally
occurring amino acid sequence at least 90% identical to the amino acid sequence of
SEQ ID NO:1.” That is, the claimed polynucleotides are defined by two characteristics:
(1) they are naturally occurring, and (2) they encode amino acid sequences that are at
least 90% identical to SEQ ID NO:1.
This appeal does not require us to decide whether the disclosure of an amino
acid sequence describes all the DNAs that encode amino acid sequences that are, e.g.,
90% identical to the disclosed sequence. For present purposes, however, we will
assume that disclosure of SEQ ID NO:1 (which adequately describes all DNAs that
encode SEQ ID NO:1) is adequate to describe all DNAs that encode sequences that are
90% identical to SEQ ID NO:1.6
6 Even if such a genus of DNAs were adequately described, the disclosure of a single amino acid
sequence may not be sufficient to enable a skilled artisan to practice the full scope of the genus without
undue experimentation. See the discussion of enablement, supra.
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