Appeal No. 1996-3887
Application 07/883,434
35 U.S.C. § 112, first paragraph
The specification is objected to under 35 U.S.C. § 112, first paragraph, as “failing
to provide an adequate written description, an enabling disclosure, and the best mode for
the claimed invention.” All of the appealed claims stand rejected on this basis; in addition,
the claims are rejected “as the disclosure is enabling only for claims limited to
compositions containing [the deposited organism].” According to the examiner,
Steinernema riobravis is “not freely obtainable or available, and requirement for deposit of
the nematode is made.” The examiner states that “[t]he requirement of 35 U.S.C. 112 may
be satisfied by a deposit of the organism” (paper no. 15, page 7) and acknowledges
appellants’ “assurance of deposit and amendment of claims to recite the deposit number,”
but maintains the rejection of the claims “until such time the requisite documents and
assurances in declaration format are made of record” (paper no. 15, page 19). Finally, the
examiner indicates that:
Upon the filing of such documents in this instance, it will not result in the
removal of the deposit requirements. However, where the deposit
requirement can be removed by filing of the above indicated requisite
documents, all reasons stated in the objection to the specification and
rejection of claims thereof as the specification still lacks adequate written
description, enablement, and best mode as indicated in the above objection
to the specification. However, as to such deposit, neither the instant
specification [nor] the claims contain a deposit number of a nematode that is
demonstrated in the specification to have any distinguishing
feature/characteristic that is not also displayed by the naturally occurring
nematode, thus the instant nematodes even where a deposit is asserted as
will be made in the future as presently claimed are not distinguishable from
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