Appeal No. 2007-0079 Page 5
Application No. 10/159,749
a method which uses, inter alia, a deletion mutant of a sequence selected from
the group consisting of SEQ ID NO: 2 or 8. It is not a matter of comparing the
activity of different proteins that fall within the same family, to the contrary, the
deletion mutant is derived from one of two specific sequences which have the
activity required by the claimed invention. Further, while Skolnick and Kopchick
teach that sequence homology is not predictive of protein function and that a
single amino acid change may change the activity of a protein, it is our opinion
that appellants have provided a representative number of deletion mutants to
demonstrate that they were in possession of the claimed genus.
In this regard, we remind the examiner that written description is
determined from the perspective of what the specification conveys to one skilled
in the art. In re GPAC Inc., 57 F.3d 1573, 1579, 35 USPQ2d 1116, 1121 (Fed.
Cir. 1995); Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d
1111, 1117 (Fed. Cir. 1991). Thus, the specification need not always spell out
every detail; only enough “to convince a person of skill in the art that the inventor
possessed the invention and to enable such a person to make and use the
invention without undue experimentation.” LizardTech Inc., v. Earth Resource
Mapping, Inc., 424 F.3d 1336, 1345, 76 USPQ2d 1724, 1732 (Fed. Cir. 2005).
As appellants point out (Brief, page 3), “[t]he pending claims encompass use of
deletion mutants of SEQ ID NOS:[ ]2 and/or 8 which retain the specified BMP
binding and antagonizing activity . . .” of the proteins having SEQ ID NOS: 2 and
8. As appellants explain (Brief, page 4), their specification provides “thirty
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