Appeal No. 94-1695
Application 07/742,088
Written Description
When this case was filed, the claims only required the use of a DNA polymerase
without reference to its heat stability property. During prosecution of the application,
appellants amended the claims to require that the DNA polymerase be “heat-stable.” The
examiner determined that the original disclosure of this application does not provide
written descriptive support for the phrase “heat-stable DNA polymerase” as required by 35
U.S.C. § 112, first paragraph. As explained in the paragraph bridging pages 3-4 of the
Examiner’s Answer, the examiner believes that the original disclosure would support the
phrase “DNA polymerase” or “Taq polymerase,” which the examiner admits is a “heat-
stable DNA polymerase” but “no where in the disclosure as filed is there a citation of the
phrase ‘heat-stable DNA polymerase’.”
The examiner’s consideration of this issue has apparently been based upon a
misunderstanding as to the correct legal standard for determining whether the original
disclosure of a patent application provides written descriptive support for later added
language. It appears that the examiner is of the opinion that the original disclosure must
contain the exact language later added by amendment. This is incorrect. As set forth in
Vas-Cath, Inc. v. Mahukar, 935 F.2d 1555, 1563, 19 USPQ2d 1111, 1117 (Fed. Cir.
1991), “the original disclosure of the application need only convey the concept now
claimed in order for the written description requirement of 35 U.S.C. § 112, first paragraph,
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Last modified: November 3, 2007