Appeal 2007-1633
Application 09/480,236
polynucleotides, and small organic molecules” have the desired
characteristic of selectively inhibiting PGHS-2.’ . . . Without such
disclosure, the claimed methods cannot be said to have been described.”).
As in the University of Rochester case, Appellants’ claimed invention
defines a broad genus of CD3-binding domains (polypeptides having 90%
identity to the variable region of UCHT-1 as determined by use of the Bestfit
program and having at least one sequence segment of at least five amino
acids of human origin) but this embodiment of the claim is limited to only
those CD3-binding domains having a desired characteristic (being at least
about 90% as effective on a molar basis in competing with UCHT-1 for
binding to human CD3 antigen). We recognize Appellants’ argument that
“one skilled in the art will have no trouble determining whether or not a
particular sequence will meet the 90% identity requirement . . .” (Br. 6).
While that may be true, just as in University of Rochester, the present
specification does not disclose which CD3-binding domains having 90%
identity to UCHT-1 and at least one sequence segment of at least five amino
acids of human origin are capable of being at least about 90% as effective on
a molar basis in competing with UCHT-1 for binding to human CD3
antigen.
Granted, those skilled in the art could screen the antibodies
encompassed by this embodiment of the claim for those having at least about
90% effectiveness on a molar basis in competing with UCHT-1 for binding
to human CD3 antigen (cf. Br. 6). That, however, does not make up for the
deficiency of the Specification’s description. The University of Rochester
court specifically noted that the patent at issue there disclosed screening
assays to identify compounds having the desired characteristic, but
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