Ex Parte Anderson et al - Page 6


                 Appeal No.  2006-0102                                                           Page 6                   
                 Application No.  09/732,439                                                                              
                         the genus” had not been provided); In re Gosteli, 872 F.2d 1008,                                 
                         1012 (Fed.Cir.1989) (two chemical compounds were insufficient                                    
                         *1359 description of subgenus); In re Smith, 59 C.C.P.A. 1025, 458                               
                         F.2d 1389, 1394-95 (1972) (disclosure of genus and one species                                   
                         was not sufficient description of intermediate subgenus); In re                                  
                         Grimme, 47 C.C.P.A. 785, 274 F.2d 949, 952 (1960) (disclosure of                                 
                         single example and statement of scope sufficient disclosure of                                   
                         subgenus).                                                                                       
                         On reflection, it is our opinion that our analysis, and the precedent relied                     
                 upon in the Decision is correct.  For the reasons set forth above and in our                             
                 Decision, we are not persuaded by appellants’ arguments and reliance on                                  
                 Capon.  Accordingly, we reaffirm the rejection of claim 59 under the written                             
                 description provision of 35 U.S.C.  112, first paragraph.  Claims 60-63, 72, and                        
                 73 fall together with claim 59.                                                                          
                 2.  Should appellants’ request for rehearing be granted to review a reference that                       
                 is not of record in the case without a showing of good and sufficient reasons why                        
                 it was not earlier presented?                                                                            
                                                                                                                         
                         According to appellants “the [e]xaminer in this case was obligated to take                       
                 into account the level of skill and knowledge in the art.”  Request, page 7.                             
                 Accordingly, appellants assert that the examiner should have considered                                  
                 Williamson3, which was not made of record, “in addition to the numerous other                            
                 references cited in the [a]ppellants’ Appeal Brief . . . .”  Id.                                         
                         According to appellants (Request, page 8), “[t]he fact that a specific                           
                 reference was not of record does not change the fact that the reference was                              
                 known at the time of filing of the application.  Therefore, the reference is pertinent                   
                 to an evaluation of the written description requirement and must be considered.”                         

                                                                                                                          
                 3 Williamson et al. (Williamson), “Molecular Cloning and Evidence for Osmoregulation of the Δ1-          
                 Pyrroline-5-Carboxylate Reductase (proC) Gene in Pea (Pisum sativum L.),” Plant Physiol., Vol.           
                 100, pp. 1464-1470 (1992).                                                                               




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