Appeal No. 2001-1651 Page 3
Application No. 09/238,972
subject matter at issue.” Purdue Pharma L.P. v. Faulding, Inc., 230 F.3d 1320,
1323, 56 USPQ2d 1481, 1483 (Fed. Cir. 2000). Nonetheless, the disclosure
must convey with reasonable clarity to those skilled in the art that the inventor
was in possession of the invention. See id. “Put another way, one skilled in the
art, reading the original disclosure, must immediately discern the limitation at
issue in the claims.” Id.
According to the examiner, (Answer, page 4), claims 3 and 16 are “drawn
to any antisense oligo which inhibits CAT2 translation and pharmaceutical
compositions comprising said antisense oligo.” Based on this interpretation of
the claims, the examiner finds (id.) that while the specification describes the
inhibitory activity of an antisense oligo consisting of SEQ ID NO: 2, the
specification fails to describe any other antisense oligo, or pharmaceutical
composition comprising such an antisense oligo, that exhibited inhibitory activity.
However, in response, appellant points out that the entire sequence of the CAT2
open reading frame was set forth in “MacLeod et al. Mol. Cell. Biol., 10:3663-
3674 (1990) and is also available from GenBank as accession no. M32485,” and
that with knowledge of the open reading frame “one skilled in the art could easily
design other effective antisense oligonucleotides.” Brief, page 12.
As set forth in Moba B.V. v. Diamond Automation Inc., 325 F.3d, 1306,
1320-21, 66 USPQ2d 1429, 1439 (Fed. Cir. 2003):
The test for compliance with § 112 has always required sufficient
information in the original disclosure to show that the inventor
possessed the invention at the time of the original filing. See …
[Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1561, 19 USPQ2d
1111, 1115 (Fed. Cir. 1991)] (“Adequate description of the
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