Appeal No. 2007-0079 Page 8
Application No. 10/159,749
New Matter:
According to the examiner (Answer, page 8), the amendment filed
April 21, 2004 removed the requirement in the claimed invention that the deletion
mutant “encodes a polypeptide that retains at least 8 contiguous amino acids of
said SEQ ID NO:[]2 or 8.” According to the examiner (Id.), “the deletion mutants
are unlimited and do potentially encompass species members with less than 8
contiguous amino acids, so long as function is provided. Yet the record does not
establish if function may be provided with such minimal portions of SEQ ID
NO:[ ]2 or 8.”
We are not persuaded for the same reasons as set forth above under the
heading “Written Description”. We agree with the examiner that the claims read
on deletion mutants with less than 8 contiguous amino acids, so long as the
function required by the claims is retained. Appellants have described the
starting materials as SEQ ID NOS:[]2 and 8 which have the activity required by
the claim and thirty examples of deletion mutations of these two sequences
which, while smaller than the whole sequence set forth in SEQ ID NOS:[]2 and 6,
share identity with the full length sequence and retain the claim recited activity.3
In our opinion, having described the whole, appellants have necessarily
described the genus of deletion mutations representing something less than the
whole sequence. In re Johnson, 558 F.2d 1008, 1018, 194 USPQ 187, 196
(CCPA 1977).
3 While appellants’ specification indicates a preference for “functional domains comprising at least
8, preferably at least 12, more preferably at least 16, [or] more preferably at least 36 contiguous
residues of the recited SEQ ID NOS . . .” we find no indication in the specification that the deletion
mutations must be any specific length. To the contrary, all that is required is that the deletion
mutation of whatever size retain the activity set forth in the claimed invention.
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