Appeal No. 94-3255
Application 07/673,264
used to define the claimed auxotrophic bacteria if (1) the
claimed auxotrophic bacterium is adequately defined by its
properties, and (2) persons skilled in the art would have
known or learned from appellants’ specification how to screen
auxotrophic Bacillus MGA3, or biologically pure strain
corresponding environmental isolate of Bacillus MGA3 having
all of the identifying characteristics of Bacillus MGA3 or
biologically pure strain stable morphological mutants of said
Bacillus MGA3 or its corresponding environmental isolate, for
their defining properties. Certainly, the question to be13
asked under the second paragraph of section 112 is not whether
the specification would have enabled one skilled in the art to
make and use auxotrophic bacteria which function in the manner
indicated in the claim. The question to be asked is whether
13 Having read the majority opinion, I must add that
persons having ordinary skill in the art would not have been
confused by the language which appellants used to define the
claimed auxotrophic bacteria if, as a matter of law, Claim 55
reasonably would have been interpreted in light of the
specification as directed exclusively to auxotrophic bacteria,
an interpretation which is, in my view, reasonably consistent
with the specification’s description of the invention. See
the Summary of the Invention (Spec., pp. 2-5). However, I
will concede that the majority’s interpretation of the scope
of the subject matter claimed is not spurious.
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