Appeal No. 95-4404
Application 07/913,121
application and parent application serial number 07/821,512. Therefore, our first
consideration is whether claims 8-19 are entitled to the benefit of the earlier filing date
under the provisions of 35 U.S.C. § 120. As required by § 120, the claims in this
application must be described in the parent application in the manner provided by 35
U.S.C. § 112, first paragraph. For the purposes of deciding this appeal, we will focus on
whether the rejected claims enjoy written description in the parent application. In so doing,
we note that an issue arising under the written description requirement of 35 U.S.C.
§ 112, first paragraph, is a question of fact. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555,
1563, 19 USPQ2d 1111, 1116 (Fed. Cir. 1991).
The present claims are directed to methods “for detecting and/or quantitating drug
resistance of reverse transcriptase in a sample” and “for detecting and/or quantitating the
reverse transcriptase inhibitory activity of a compound” and include several limitations (i.e.,
steps) related to these objectives. The parent application discloses an assay for detecting
reverse transcriptase but makes no mention of these specific objectives or limitations.
Appellants point to the “BACKGROUND OF THE INVENTION” in the parent application
wherein it is stated that “[d]etection of RT can be very important because this enzyme is a
logical target for anti-viral therapy and, therefore, anti-viral drug screening can be carried
out by RT detection” and argue that the claims “merely [make] explicit that which was
clearly inherent in the specification.” See Brief, page 17.
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