Appeal 2007-1069
Application 10/334,990
enzymes was also known and could be deduced from the amino acid
sequences based on the known genetic code (Br. 21). Like the
circumstances in Capon, Appellants are not claiming to have discovered the
DNAs recited in claim 17; they are prepared from known DNA sequences of
known function. The Examiner erred in concluding that the Specification
does not meet the written description requirement because it does not
reiterate the structure of the claimed genus of known enzymes. We reverse
the rejection of claims 17-19, 21-24, 26-28, 30-38, 42, 45, and 46 for lack of
written description.
Rejection under § 112, first paragraph for lack of enablement
Claims 17-19, 21-24, 26-28, 30-38, 42, 45, and 46 stand rejected
under § 112, first paragraph, for lack of enablement (Answer 8). The
Examiner states that it would require undue experimentation to practice the
claimed invention with “a microorganism transformed with a DNA encoding
any hydantoinase, hydantoin racemase and/or carbamoylase” (Answer 8).
The Examiner asserts “[t]he scope of the claims . . . is not commensurate
with the enablement provided in regard to the extremely large number of
unknown DNAs encoding any hydantoinase, hydantoin racemase, or
carbamoylase required to practice the claimed invention” (Answer 8). The
Examiner contends that the example of enzymes from one strain of
Arthobacter (SEQ ID NOS: 8, 10, and 6) is not sufficient to enable the full
scope of the claim because there is no information about the structure of
other hydantoinases, hydantoin racemases, and carbamoylases (Answer 9).
The Examiner also states that it would not be routine “to isolate/create any
polynucleotide encoding a protein with the activity recited without any
8
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