Appeal No. 2004-1259
Application No. 09/832,355
We apply the relevant law above to the facts before us. In the present case, with
respect to the written description aspect of the rejection, we find the specification to be
sufficiently detailed, specifically describing a large group of representative compounds
which fall within the scope of the pending claims. The claims only require that the
VEGF peptides possess one or the other of the angiogenesis promoting and bone
growth promoting activities. The specification, however, would appear to describe
HBNF peptides, which according to appellants and the specification, possess bone
growth promoting properties. Specification, page 27.1
In our view appellants have described the claimed subject matter in the
specification clearly enough that one having ordinary skill in the pertinent art would
recognize from the disclosure that appellants invented the claimed subject matter. In
view of the above, this aspect of the enablement and written description rejections is
reversed.
2. Lack of Written Description and Enablement non-VEGF Protein
The examiner also argues that the specification does not provide an adequate
written description of or enablement of the scope of claimed “second non-VEGF peptide
portion” with angiogenesis or bone growth promoting activity in general, nor with the
scope of HBNF in particular. Answer, page 8. The examiner argues (Answer, page 8):
1 The examiner has presented no evidence that HBNF was not known to those
of ordinary skill in the art to possess bone growth promoting properties.
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