Appeal No. 2003-2084 Page 5
Application No. 08/241,061
Discussion
1. Written Description Rejection of Claim 102.
The examiner explains the rejection as follows:
The ligand is 'drug of abuse, metabolite of drug abuse, an
analogue of the drug abuse, an analogue of the metabolite of the drug
abuse, therapeutic drug, a metabolite of a therapeutic drug, an analogue
of a therapeutic drug, and an analogue of a metabolite of a therapeutic
drug...' claimed in claim 102 has no clear support in the specification and
the claims as originally filed. The subject matter claimed in claims [sic]
102 broadens the scope of the invention as originally disclosed in the
specification.
Examiner’s Answer, page 4.
Appellants argue that literal support for the language is found in the specification
at page 1, line 10 through page 2, line 16 and page 11, lines 9-13. Appeal Brief, pages
28-30. The examiner states that appellants may not rely upon that portion of the
specification at page 1 since that portion is "Background of the Invention" and not
"drawn to the composition as claimed in the instant claims." Examiner's Answer, page
12.
In reviewing the matter, we find ourselves in agreement with appellants. The
examiner is correct in pointing out that the portion of the specification at page 1 which
appellants rely upon for written descriptive support of the questioned claim language is
headed by the title "Background of the Invention." However the specific text relied upon
by appellants uses phrases such as "as used herein" and “in the context of the present
invention.” Clearly, in describing the "Background of the Invention," appellants are
setting forth part of the present invention. In other words, the present invention, as do
most inventions, builds upon what was known in the art. The present specification
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