Appeal No. 1997-0838
Application 08/235,238
Examples 1-4 in the specification show the claimed process where it is
implied the LDH1 activity is preserved, however, it is not clearly shown what
the activity was before and after the inhibiting step. Such a claimed
limitation must be specifically recited in the specification. (Examiner’s
Answer, page 5).
This conclusory statement does not satisfy the examiner’s initial burden of
establishing unpatentability. In re Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369
(CCPA 1971). The specification need only teach how to make and use the claimed
invention. The examiner has not done the factual analysis necessary to establish that
appellants’ specification does not meet this standard, especially in light of Examples 1, 2
and 4, wherein LDH retains 69% or more of its initial activity (i.e., wherein LDH has a1 1
“residual activity” of 69% or more) in the presence of a protein denaturing reagent and "-
chymotrypsin.
Accordingly, Rejection II of claims 10 and 11 as lacking enablement under 35
U.S.C. § 112, first paragraph, is reversed.
Written Descriptive Support
An issue arising under the written description requirement of 35 U.S.C. § 112, first
paragraph, is a question of fact. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19
USPQ2d 1111, 1116 (Fed. Cir. 1991). “[T]he ‘written description’ requirement most often
comes into play where claims not presented in the application when filed are presented
thereafter . . . The question raised by these situations is most often phrased as whether the
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007