Appeal No. 2006-0102 Page 4
Application No. 09/732,439
of any type”, “which catalyzes the synthesis of the osmoprotectant
proline.” According to the examiner (Answer, bridging sentence,
pages 15-16), appellants’ specification does not disclose or refer to
any DNA segment or enzyme within this genus.
In addition, we pointed out the examiner’s finding that “[g]iven that proline is an
amino acid found in virtually all organisms, a variety of structurally and
functionally distinct proline biosynthetic enzymes exist that are encoded by genes
from divergent plant, animal and microbial species.”
Appellants’ Request does not address these findings. Instead, appellants
assert that they “are not claiming novel nucleic acids, but rather are claiming an
invention that makes use of known sequences.” Request, page 5. According to
appellants (Request, bridging sentence, pages 5-6), “[t]he Board acknowledges
in the present case that at least two genes for use with the invention were
known . . . .” More accurately, we stated “[a]t best, appellants have established
that two such genes, Δ1-pyrroline-5-carboxylate synthetase and [human]
pyrroline-5-carboxylate reductase, were known in the art at the time their
invention was made.” Decision, page 12. Had claim 59 been limited to these
two genes, we would have agreed that “since ‘these sequences were known to
those of skill in the art at the time of filing, [a]ppellants cannot be said to lack
written description for these sequences.’” Decision, page 8. Here, as in Capon,
requiring appellants to reiterate in their specification the structure or formula of
known DNA sequences having a known function does not add descriptive
substance. Capon 418 F.3d at 1358, 76 USPQ2d at 1085. The problem is,
however, that claim 59 is not limited to these sequences and appellants’
specification does not adequately support the breadth of the genus
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