Appeal No. 94-1775
Application 07/488,513
Claims 1 and 5 through 14 are rejected under 35 U.S.C. § 112, first paragraph, as
lacking written descriptive support in the original disclosure of this application and 35
U.S.C. § 112, second paragraph, as being indefinite.
As set forth above, claim 1 was amended during prosecution of this application to
require that the proteins with hirudin activity are “predominantly” secreted into the culture
medium. The specification of this application consists of 117 pages. Appellants did not
point out where the original disclosure of this application provided the written descriptive
support required under 35 U.S.C. § 112, first paragraph. Our review of the matter,
hampered as it was by the lack of guidance from appellants, did not reveal any portion of
the specification which can reasonably be said to provide the requisite written descriptive
support for the amendatory language.
An integral part of the analysis to determine whether the original disclosure of this
application provides written descriptive support for the questioned amendatory language
is a determination of the metes and bounds of the word “predominantly.” If one does not
know what to look for, one will never know whether they found it. As the record now stands,
the written descriptive support for and the metes and bounds of the questioned term
3
cannot be readily ascertained.
3Issues such as those raised in this new ground of rejection would be avoided in
the most part if examiners would enforce the requirements of 37 CFR § 1.75(d)(1) when
amendments are submitted during the prosecution of an application. If upon receipt of the
amendment filed May 16, 1991, in this application, the examiner had required appellants
to state for the record where the amended claim language finds “clear support or
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