Appeal No. 2005-1383
Application No. 09/364,847
. . . with the recited genera of enzymes comprising the fusion protein, the
functional definition of the genus does not provide structural information
commonly possessed by all members of the genus, which distinguish the
enzyme species within the genus such that a skilled artisan can visualize
or recognize the identity of all species of recited enzymes from any
source. Besides the disclosed species, the specification fails to describe
any other representative species of naturally occurring or mutant enzymes
by any identifying characteristics or properties other than the functionality
of being a fusion of the individual enzyme subunits as recited in claims 1
and 2 [Answer, p. 6].
The examiner contends that “the structures of all species encompassed by the recited
genera of enzymes is [sic, are] unpredictable.” Id.
It is well established that the purpose of the written description requirement is to
“ensure that the scope of the right to exclude, as set forth in the claims does not
overreach the scope of the inventor’s contribution to the field as far as described in the
patent specification.” Reiffin v. Microsoft Corp., 214 F.3d 1342, 1345, 54 USPQ2d
1915, 1917 (Fed. Cir. 2000). To that end, to satisfy the written description requirement,
the inventor “must also 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.” Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991). “One
shows that one is ‘in possession’ of the invention by describing the invention, with all its
claimed limitations . . .”). Lockwood v. American Airlines, 107 F.3d 1563, 1572, 41
USPQ2d 1961, 1966 (Fed. Cir. 1997).
We point out that it is not necessary for the specification to describe the claimed
invention ipsissimis verbis; all that is required is that it reasonably convey to those
skilled in the art that, as of the filing date sought, the inventor was in possession of the
claimed invention. Union Oil of California v. Atlantic Richfield Co., 208 F.3d 989, 997,
54 USPQ2d 1227, 1232 (Fed. Cir. 2000); Vas-Cath Inc. v. Mahurkar, 935 F.2d at
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