Appeal 2007-1069
Application 10/334,990
knowledge as to the structural features which would correlate with that
activity” (Answer 9).
“To be enabling, the specification of a patent must teach those skilled
in the art how to make and use the full scope of the claimed invention
without ‘undue experimentation.’” Genentech, Inc. v. Novo Nordisk, A/S,
108 F.3d 1361, 1365, 42 USPQ2d 1001, 1004 (Fed. Cir. 1997). The
Examiner’s rejection is based on the breadth of the claimed genus in
covering enzyme coding sequences which are not disclosed or described in
the Specification. However, Appellants have provided evidence that the
claimed enzymes – hydantoinase, hydantoin racemase and D- or L-specific
carbamoylases – had been characterized in the prior art and that many
examples of each enzyme type were known prior to the filing date of the
application (Br. 12-21).
Appellants also present evidence that conserved amino acid motifs
involved in enzyme catalysis were known for each enzyme class (Br. 14-20).
While the Examiner acknowledges the existence of these conserved motifs,
the Examiner contends that “it is unlikely that these small motifs [are] all
that is required for a protein to have the recited enzymatic activity since the
catalytic sites for enzymes are expected to be larger than 5 amino acids”
(Answer 26). We do not find this persuasive. First, the catalytic regions of
each enzyme class are not characterized as having less than 5 amino acids.
For hydantoinases, conserved residues span almost 200 amino acids (e.g.,
from 56-239) (Br. 16); for hydantoinase racemase, more than nine amino
acids (e.g., from 196-208; from 196-204) (Br. 18). Secondly, because a
large number of enzymes were known in the prior, including their
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