Appeal No. 94-3255
Application 07/673,264
the auxotrophic bacteria encompassed by appellants’ claim can
readily be identified. The second paragraph of section 112
does not require that the specification enable one skilled in
the art to make and use the full scope of auxotrophic bacteria
encompassed by the claims. It only requires that the skilled
artisan be able to distinguish the auxotrophic bacteria which
is claimed from auxotrophic bacterium which is not encompassed
by the claim without undue experimentation.
To determine whether or not the requirements of the
second paragraph of section 112 have been satisfied, we need
not concern ourselves with bacteria deposits or the amount of
experimentation one skilled in the art would have been
required to perform to make and use the full scope of the
claimed invention. If persons skilled in the art could have
readily identified the auxotrophic bacteria encompassed by
appellants’ claims in light of the teaching in the
specification, the requirements of 35 U.S.C.
§ 112, second paragraph, are satisfied.
Even assuming the Claim 55 is not drawn exclusively to
auxotrophic bacteria, I conclude that the specification
supporting Claim 55 on appeal would have clouded rather than
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