Appeal No. 2006-1035 Page 14
Application No. 09/925,140
Rochester, the present specification does not disclose which of the many possible
DNAs that encode amino acid sequences at least 90% identical to SEQ ID NO:1
encode naturally occurring sequences.
Granted, those skilled in the art could screen libraries of naturally occurring
DNAs to identify for themselves specific DNAs that encode naturally occurring amino
acid sequences at least 90% identical to SEQ ID NO:1. That, however, does not make
up for the deficiency of the specification’s description. The University of Rochester
court specifically noted that the patent at issue there disclosed screening assays to
identify compounds having the desired characteristic, but nonetheless held that the
description was inadequate. The same holds true here.
Appellants argue that the specification discloses SEQ ID NOs 1 and 2, and that
“[t]he Specification further describes variant sequences of SEQ ID NO:2 that have at
least about 90% identity to SEQ ID NO:2 (specification, page 15, line 33 through page
16, line 7) . . . [and] variants at least 90% identical to SEQ ID NO:1.” Appeal Brief, page
10. Appellants also argue that the “specification also provides guidance in determining
percent identity.” Id., page 11. Appellants argue that “the identification of relevant
polynucleotides could be performed by hybridization and/or PCR techniques that were
well-known to those skilled in the art at the time the subject application was filed.” Id.,
page 12.
This argument is not persuasive. The cited passage from the specification
(pages 15-16) merely recites the same words used in the claims. It does not disclose
the structure of any DNAs within the scope of the claim. Further, as discussed above,
the court in University of Rochester made clear that § 112 requires a description of
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