Appeal No. 2007-0534
Application No. 10/463,016
sequence because “the state of the art has developed” such that it is a
routine matter to convert one to the other); University of Rochester, 358
F.3d at 925 (considering whether the patent disclosed the compounds
necessary to practice the claimed method, given the state of technology);
Singh v. Brake, 317 F.3d 1334, 1343, 65 USPQ2d 1641 (Fed. Cir. 2002)
(affirming adequacy of disclosure by distinguishing precedent in which the
selection of a particular species within the claimed genus had involved
“highly unpredictable results”).
Id. at 1359, 76 USPQ2d at 1085. Furthermore, an actual reduction to practice is not
required for written description. See Univ. of Rochester v. G.D. Searle & Co., 358 F.3d
916, 926, 69 USPQ2d 1886, 1094 (Fed. Cir. 2004).
In the present case, we agree with appellants that given such considerations as
the state of the prior art, that the examiner has failed to set forth a prima facie case of
lack of adequate written description for the pending claims. While the examiner is
correct in that the claim scope, i.e., the fusion proteins, is broad, in our view the
examiner has failed to give adequate weight to the state of the relevant prior art.
The specification, page 2, describes that the first fusion protein includes an
anchor component and a variable component and the second fusion protein includes a
docking member (which docks with the anchor component of the first fusion protein) and
a target domain (which is modulated by, and binds to the variable component of the first
fusion protein.) According to the specification, "the method of the invention may be
used to identify an activator or inhibitor of the target active domain." Id.
The specification provides broad and general examples of the types of molecules
which may be used as the anchor component and variable component. For example, it
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