Appeal No. 2007-0079 Page 7
Application No. 10/159,749
sequences. Thus, the deletion mutants share structural identity with a portion of
SEQ ID NOS:[]2 or 8. In addition, the claims require that all members of the
genus of deletion mutants have the same activity as the proteins having SEQ ID
NOS: 2 and 8. This is not a case where appellants are looking for other non-
disclosed proteins that share some degree of homology and functional activity
with SEQ ID NOS:[]2 and 8. To the contrary, on this record we start with two
complete sequences and produce deletion mutants of these sequences that
retain the functional activity of the starting material as defined by the claimed
invention. As discussed above, appellants have disclosed thirty such deletion
mutations. While this may not be an exhaustive listing of the mutations within the
scope of the claimed invention, it is our opinion that provides adequate evidence
that a person of ordinary skill in the art would recognize that appellants had
possession of the invention as claimed. We remind the examiner that the written
description requirement of 35 U.S.C. § 112, first paragraph, does not require a
description of the complete structure of every species within a chemical genus.
See Utter v. Hiraga, 845 F.2d 993, 998, 6 USPQ2d 1709, 1714 (Fed. Cir. 1988)
(“A specification may, within the meaning of 35 U.S.C. § 112, ¶ 1, contain a
written description of a broadly claimed invention without describing all species
that claim encompasses.”).
For the foregoing reasons, we reverse the rejection of claims 1-6 under
the written description provision of 35 U.S.C. § 112, first paragraph.
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