Appeal No. 94-1775
Application 07/488,513
This claim requirement was added by amendment on May 16, 1991 (Paper No.
18). When this amendment was presented, appellants did not specify where in the original
disclosure of this application, the amendatory language found written descriptive support
or attempt to describe the metes and bounds of the word “predominantly.” In similar
fashion, the examiner has not favored the record with his view as to where the original
disclosure of the application provides written descriptive support for the newly added
language or discussed the metes and bounds of the word “predominantly.”
Assuming again without deciding that the prior art relied upon by the examiner
would have suggested the use of yeast cells transformed with the hybrid vector required by
claim 1 on appeal to produce proteins with hirudin activity, one is not in a position to make
a patentability determination of the subject matter of claim 1 under
35 U.S.C.§ 103 as a whole until an understanding is reached as to whether the original
disclosure of this application provides written descriptive support of the amendatory
language under 35 U.S.C. § 112, first paragraph, and, if so, what the metes and bounds of
this amendatory language are. Thus, we are not in a position to render a final decision as
to whether the subject matter of claim 1 as a whole would have been obvious to one of
ordinary skill in the art. Claims 5 through 14 depend from claim 1 and do not clarify this
matter. Accordingly, we vacate the rejection under 35 U.S.C. § 103 premised upon Chang
as it pertains to claims 1 and 5 through 14. But see the new grounds of rejections below
under the provisions of 37 CFR § 1.196(b).
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