Appeal No. 94-3255
Application 07/673,264
biotin. See enablement discussion under Other Issues, below.8
As to our colleague's conclusion that claim 55 is
indefinite for the reason set forth in subsection (ii), we
find it inconsistent with the conclusion concerning the
presence of biotin in the nutrient medium. That is, on the
one hand he finds that because it is not recited, claim 55
excludes biotin. Now, he concludes that because of the open
language, the claim includes carbon and energy sources other
than methanol. To that end, we agree that it does. However,
in reading the claim in light of the specification, we find
that it defines methylotrophs as microorganisms that utilize
one-carbon compounds more reduced than carbon dioxide as their
energy source. Specification, p. 1, lines 15-17. The
specification discloses that facultative methylotrophs (which
8 Cf. In re Mayhew, 527 F.2d 1229, 1233, 188 USPQ 356, 358
(CCPA 1976)(“Although appellant now strenuously argues that
the cooling bath is optional, his specification not only fails
to support this contention, but leads us, as it did the
examiner and board, to believe that both it and its location
are essential. We therefore conclude that claims which fail
to recite the use of a cooling zone, specially located, are
not supported by an enabling disclosure”).
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