Appeal No. 2001-1240 Page 6
Application No. 08/374,520
Here, the specification contains a description of baccatin III derivatives
that appears to be almost word-for-word the same as the description in, for
example, claim 45. See pages 7-9. The examiner nonetheless rejected claim
45, together with claims 46-56, as “being new matter,” i.e., lacking an adequate
written description. His explanation is that “claims 45 to 56 [are] broader than the
scope of the original claims” (Examiner’s Answer, page 4) and that “[t]he new
claims embody various species which are not enabled by the specification such
as R6 and R6a are not hydrogen; R7, R7a, R9, R9a, R10, R10a are hydrogen; R14 and
R14a are not hydroxy.” Id., page 6.
This explanation does not meet the examiner’s burden of showing that the
specification does not adequately disclose the compounds of claims 45-56. The
fact that new or amended claims are broader than the original claims is not the
test of new matter. The test is whether the new or amended claims are
adequately described by the specification. In addition, the examiner has
provided no explanation for his conclusory assertion that certain embodiments
within the claimed compounds are “not enabled by the specification.” To the
extent that the assertion is intended to bolster the new matter/written description
rejection, we note that all of the species listed in the Examiner’s Answer appear
to be expressly recited in the specification. See page 7. The rejection under 35
U.S.C. § 112, first paragraph, is reversed.
Other Issues
As discussed above, the instant claims are not identical to those of U.S.
Patents 5,399,726 and 5,587,489. The instant claims, however, may be generic
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