Appeal No. 2005-1745
Application No. 09/161,680
‘new catalytic activity . . . within the same International Union of Biochemistry class as
the enzyme’s original activity.’” Answer, p. 5. Thus, the examiner finds that the
specification fails “to reasonably convey to one skilled in the relevant art that the
inventor(s), at the time the application was filed, had possession of the” invention
described in claims 24-27. Id.
In response, the appellants argue that support for the claim language can be
found in the specification on “page 4, line 10,” and in the example which begins on page
11. Brief, p. 10. We find this argument unpersuasive.
As a preliminary matter, we point out that in our deliberation of this issue we
considered “page 4, line 10,” and the example which begins on page 11, of the
specification, as originally filed, and not any of the appellants’ amendments thereto.
Here, we find that the appellants added the contested phrase to the claims in the
amendment received by the USPTO on September 16, 2003, but not entered until
November 6, 2003. As discussed above, when new subject matter is added to the
claims, the proper course of action is to reject said claims under §112, first paragraph. In
re Rasmussen, 650 F.2d at 1214, 211 USPQ at 326. As further discussed above, to
satisfy the written description requirement, the inventor “must convey with reasonable
clarity to those skilled in the art that, as of the filing date sought, he or she was in
possession of the invention” [emphasis added]. Vas-Cath Inc. v. Mahurkar, 935 F.2d at
1563-64, 19 USPQ2d at 1117.
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