Appeal 2007-4148
Application 09/148,012
desired activity: without disclosure of which peptides, polynucleotides, or
small organic molecules have the desired characteristic, the claims were not
adequately described. See id. (“As pointed out by the district court,
however, the ‘850 patent does not disclose just ‘which “peptides,
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.”).
Just as in Rochester, the present application discloses several genera
of chemical compounds (“nucleotide molecules such as antisense
oligonucleotides, ribozymes, and triplex forming oligonucleotides . . . ; small
organic molecules . . . ; soluble SR-BI protein or fragments thereof . . . ; and
compounds which block binding of HDL to SR-BI”) and assays for
screening such compounds to identify those having the desired activity.
And, just as in Rochester, the present Specification does not disclose which
of the many candidate compounds have one of the recited activities. The
Rochester court held that such a disclosure does not adequately describe a
genus of compounds required to practice a claimed method.
Granted, the present case differs from Rochester in that the present
Specification describes antibodies to murine SR-BI, one of the compounds
having the activity recited in claim 1. That disclosure, however, does not
adequately distinguish the instant case from Rochester, because Appellant
has not shown that the antibody is representative of the entire genus of
compounds having the recited activities or that it shares “structural features
common to the members of the genus, which features constitute a substantial
portion of the genus.” Cf. Eli Lilly, 119 F.3d at 1569.
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