Appeal No. 2007-0079 Page 6
Application No. 10/159,749
exemplary DAN and gremlin[ ] 2deletion mutants” which have the activity required
by their claimed invention. See e.g., Table 1, specification, pages 7-8. As
appellants assert (Brief, page 4), a “practitioner can define from these sequences
any arbitrary deletion mutant, and use the described routine binding assays to
confirm requisite activity.” We agree.
The Federal Circuit has held that “[a] description of a genus of cDNAs may
be achieved by means of a recitation of a representative number of cDNAs,
defined by nucleotide sequence, falling within the scope of the genus or of a
recitation of structural features common to the members of the genus, which
features constitute a substantial portion of the genus.” University of California v.
Eli Lilly and Co., 119 F.3d 1559, 1568-69, 43 USPQ2d 1398, 1406 (Fed. Cir.
1997). Our appellate reviewing court has also held that the complete structure of
a claimed DNA is not necessarily required. The court adopted the standard that
“the written description requirement can be met by ‘show[ing] that an invention is
complete by disclosure of sufficiently detailed, relevant identifying characteristics
. . . i.e., complete or partial structure, other physical and/or chemical properties,
functional characteristics when coupled with a known or disclosed correlation
between function and structure, or some combination of such characteristics.’”
Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 964, 63 USPQ2d 1609,
1613 (Fed. Cir. 2002) (emphasis omitted, alterations in original).
In this case, the complete structure of SEQ ID NOS: 2 and 8 are
described, and the deletion mutants of the claimed genus are derived from these
2 As we understand it, DAN proteins have the sequence set forth in SEQ ID NO: 8 and gremlin
proteins have the sequence set forth in SEQ ID NO: 2, 4 and 6. Specification, page 6.
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