Appeal No. 96-0051 Page 4
Application No. 07/987,256
222 USPQ 369, 372 (Fed. Cir. 1984); Vas-Cath Inc. v. Mahurkar,
935 F.2d 1555, 1563, 19 USPQ2d 1111, 1116-17 (Fed. Cir. 1991). To
satisfy the written description requirement, the specification must
clearly convey to those skilled in the art the information that the
Applicant invented the claimed subject matter. Vas-Cath, Inc.,
935 F.2d at 1562, 19 USPQ2d at 1115. A lack of enablement rejection
is appropriate where the written description fails to teach those in
the art to make and use the invention as broadly as it is claimed
without undue experimentation. In re Cortright, 165 F.3d 1353, 1356,
49 USPQ2d 1464, 1466 (Fed. Cir. 1999).
According to the examiner, claim 37 would require undue
experimentation because
there is no guidance as to what segments to invert or what
promoter to use in order to alter transcription and avoid
deleterious effects of altering expression of fundamental
biochemical processes.
(Paper No. 37 at 5.) Moreover, the examiner urges that the
relationship of the 46 kD protein and any of the 50 kD proteins to
synthases I and II is not clearly established in the specification.
The specification describes the construction of synthase
expression cassettes (Paper No. 1 at 95-100). Antisense constructs
can use the same expression cassettes (Paper No. 1 at 102). Claim 37
requires the inversion of the "sequence of Claim 21 or Claim 25" so,
to the extent claims 21 and 25 are definite and supported, there
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