Appeal No. 94-3255
Application 07/673,264
rejection under 35 U.S.C. § 112, second paragraph, and reverse
the rejections under the § 112, first paragraph. While we are
affirming under § 112, second paragraph, the reasons for which
we do so differ somewhat from those of the examiner.
Accordingly, we denominate our affirmance as a new ground of
rejection under 37 CFR § 1.196(b).
Opinion
We note at the outset that the examiner has issued “two”
§ 112 rejections. The first, is a combination of a § 112,
second paragraph, and a § 112, first paragraph, enablement
rejection. The second, is a § 112, first paragraph, written
description rejection based on the appellants’ failure to
deposit certain biological strains. With this in mind, we
point out that it is well established that that claim analysis
“should begin with the determination of whether the claims
satisfy the requirements of the second paragraph,” of 35
U.S.C. § 112. In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236,
238 (CCPA 1971). In Moore the court stated:
[I]t should be realized that when the first
paragraph speaks of “the invention”, it can only
be referring to that invention which the
applicant wishes to have protected by the patent
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