Appeal No. 1995-2789
Application No. 07/788,114
artisan to either make or use the invention as it is broadly claimed.” The
examiner finds (id.) that “[i]t is not clear from the specification what appellants
consider to be the carboxy terminus of the enzyme.” Notwithstanding this
finding, the examiner argues (Answer, bridging paragraph, pages 6-7) that:
Regardless of what appellants regard as the carboxy terminus of
the homoserine dehydrogenase gene, a single example disclosed
by appellants certainly does not suffice as an adequate written
description requirement for the legion of mutants being claimed. In
the absence of further information and guidelines with regard to
other mutants in “the carboxy terminus” of the homoserine
dehydrogenase gene, it would require undue experimentation for
the ordinary skilled artisan to either make or use the invention as it
is claimed.
Initially we note that there is some confusion on this record as to whether
the examiner intends a written description rejection, because the specification
fails to provide adequate descriptive support for the claimed invention, or an
enablement rejection because the specification fails to enable the full scope of
the claimed invention. We note that appellants understood, and responded to
the examiner’s rejection as if the examiner rejected the claims as “based on non-
enablement.” See e.g., Brief, page 14. However, we note the examiner’s
statement of the rejection (see e.g., Answer, pages 6) refers to the
specification’s failure to provide adequate descriptive support for the claimed
invention, a “written description” rejection.
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