Ex parte RAULSTON et al. - Page 11




                 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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