Appeal No. 1995-2789
Application No. 07/788,114
agreement (Answer, page 13) with appellants’ interpretation of Amgen Inc. v.
Chugai Parmaceuticals Co. Ltd., 927 F.2d 1200, 1213, 18 USPQ2d 1016, 1027
(Fed. Cir. 1991) “that generic claims to nucleotide sequences would be valid
when of a scope appropriate to the disclosure.” However, determining whether
generic claims are “of a scope appropriate to the disclosure” requires a fact-
based analysis of the record.
Therefore, we are not persuaded by the examiner’s conclusion (Answer,
page 13) that “[a] single example is not considered to be representative of the
genus of mutants being claimed.” We remind the examiner, as do appellants
(Reply Brief, page 6) that working examples are not required to satisfy the
requirements of 35 U.S.C. § 112, first paragraph. In re Strahilevitz, 668 F.2d
1229, 1232, 212 USPQ 561, 563 (CCPA 1982).
By failing to provide a fact based analysis of appellants’ specification, that
addresses the specific deficiencies in its descriptive support of the claimed
invention, the examiner failed to meet his burden in finding appellants’
specification does not provide an adequate description of the claimed invention.
Therefore, in our opinion, the examiner failed to meet his burden of establishing
that the specification fails to provide an adequate written description of the
claimed invention.
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