Appeal No. 2006-0102 Page 5
Application No. 09/732,439
encompassed by claim 59. In this regard, we direct appellants’ attention to the
second part of Capon, specifically discussing the relationship between the scope
of the claim and the written description requirement. Capon, 418 F.3d at 1358-
1361, 76 USPQ2d at 1085-1087.
As discussed at page 9 of the Decision, “the evidence of record
establishes that as of appellants’ filing date three distinct pathways were known
to exist for the production of proline.” Notwithstanding the “three separate
pathways for the biosynthesis of proline, which appear to utilize a number of
different enzymes, appellants would assert that the knowledge in the art of P5CS
and P5CR is representative of the entire genus of enzymes involved in proline
biosynthesis.” Id. We disagree. In this regard, we note that “[a]ppellants fail to
direct our attention to any evidence of record . . . that teaches the enzymes
involved in the third pathway for proline biosynthesis, which involves the
intermediate ornithine.” Id.
For the foregoing reasons, as well as those set forth in the Decision, we
disagree with appellants’ assertion that “the facts and holding of Lilly are
inapposite to the present case, as vividly demonstrated in Capon.” Request,
bridging sentence, pages 3-4. As set forth in Capon
[i]t is well recognized that in the “unpredictable” fields of science, it
is appropriate to recognize the variability in the science in
determining the scope of the coverage to which the inventor is
entitled. Such a decision usually focuses on the exemplification in
the specification. See, e.g., Enzo Biochem, 296 F.3d at 1327-28
(remanding for district court to determine “[w]hether the disclosure
provided by the three deposits in this case, coupled with the skill of
the art, describes the genera of claims 1-3 and 5”); Lilly, 119 F.3d
at 1569 (genus not described where “a representative number of
cDNAs, defined by nucleotide sequence, falling within the scope of
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