Appeal No. 1995-2789
Application No. 07/788,114
Written Description:
As set forth in Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1323, 56
USPQ2d 1481, 1483 (Fed. Cir. 2000) the written description “inquiry is a factual
one and must be assessed on a case-by-case basis.” Furthermore, “the PTO
has the initial burden of presenting evidence or reasons why persons skilled in
the art would not recognize in the disclosure a description of the invention
defined by the claims.” In re Wertheim, 541 F.2d 257, 263, 191 USPQ 90, 97
(CCPA 1976). As set forth in Wertheim, 541 F.2d at 262, 191 USPQ at 96:
The function of the description requirement is to ensure that
the inventor had possession, as of the filing date of the application
relied on, of the specific subject matter later claimed by him; how
the specification accomplishes this is not material. In re Smith, 481
F.2d 910, 178 USPQ 620 (CCPA 1973), and cases cited therein. It
is not necessary that the application describe the claim limitations
exactly, In re Lukach, [442 F.2d 967, 169 USPQ 795 (1971]… but
only so clearly that persons of ordinary skill in the art will recognize
from the disclosure that appellants invented processes including
those limitations. In re Smythe, 480 F.2d 1376, 1382, 178 USPQ
279, 284 (CCPA 1973).
The primary consideration is factual and depends on the
nature of the invention and the amount of knowledge imparted to
those skilled in the art by the disclosure.
Here the examiner interprets the claims to read on a genus of mutants.
See Answer, bridging sentence, pages 13-14, it is a “genus of mutants being
claimed”; see also Answer, page 6, “a broad class of homoserine
dehydrogenase mutants being claimed.” In this regard, we note the examiner’s
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