Appeal No. 96-0706
Application 08/185,756
Having carefully considered the conflicting points of view
expressed by the appellants and the examiner, we conclude that
the § 112, first paragraph rejection of claims 23 through 40 must
be reversed.
The situation here is reminiscent of that in In re Alton,
76 F.3d 1168, 37 USPQ2d 1578 (Fed Cir. 1996). In Alton, the
examiner gave little or no weight to a declaration submitted by
the appellant Alton to overcome a rejection under 35 U.S.C.
§ 112, first paragraph for failing to provide an adequate written
description of the there-claimed amino acid sequence. In re
Alton, 76 F.3d at 1171, 37 USPQ2d at 1580. In vacating the
decision below, the court pointed out:
The adequate written description requirement of 35
U.S.C. § 112, ¶ 1, provides that
[t]he specification shall contain a written
description of the invention, and of the
manner and process of making and using it, in
such full, clear, concise, and exact terms
as to enable any person skilled in the art to
which it pertains, or with which it is most
nearly connected, to make and use the same,
and shall set forth the best mode
contemplated by the inventor of carrying out
his invention.
(emphasis added).
The adequate written description requirement,
. . . serves "to ensure that the inventor had
possession, as of the filing date of the application
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