Appeal No. 94-1695
Application 07/742,088
to be satisfied.” Here, the original disclosure of the application describes the specific
DNA polymerase used, Taq DNA polymerase, as “heat-stable.” See, e.g., page 12, lines
8-15, of the present specification. Thus, appellants, in describing their invention in the
specification, conveyed the concept that the present invention involves the use of a “heat-
stable DNA polymerase.” That is all this section of the statute requires.
The rejection under 35 U.S.C. § 112, first paragraph, written description, is
reversed.2
Enablement
As understood from a review of the paragraph bridging pages 2-3 of the
Examiner’s Answer, the examiner’s concern in regard to the enablement requirement of 35
U.S.C. § 112, first paragraph, is that the description and use in the specification of a single
“heat-stable DNA polymerase” does not enable one skilled in the art to make and use the
claimed invention. In response, appellants rely, inter alia, upon the declaration filed under
37 CFR § 1.132 of co-appellant Kirk Fry executed on September 4, 1992. Therein Dr. Fry
cites several references which indicate that thermostable polymerases other than Taq
2The examiner’s concern that the specification contain the exact wording of the
claims is better addressed by enforcement of the provisions of 37 CFR § 1.75(d). Any
time a claim is amended using language that does not literally appear in the specification
of the application, this rule requires that applicant amend the specification to include the
amendatory language.
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