Appeal No. 2001-2524 Page 4
Application No. 08/369,295
According to appellant (Brief, page 8), the originally filed specification and claims
therefore “convey with reasonable clarity to those skilled in the art” that they were
in possession of what is now claimed. We agree.
On this record, appellant discloses in the originally filed specification a
range of at least 5 amino acids wherein the upper limit is approximately 130
amino acids. As the examiner recognizes (Answer, page 4), the originally filed
specification also provides for peptides having lengths of 10, 20, 21 and 22
amino acids. Therefore the question is whether, on these facts, the examiner
has presented sufficient reason to doubt that the broader described range (at
least 5 amino acids with an upper limit of approximately 130 amino acids) also
describes the somewhat narrower claimed range (ten or more amino acids, as
set forth in claim 54; or ten to 22 amino acids, as set forth in claim 55). We note
that the examiner provides no evidence that there is a distinction between the
claimed lower limit and the broader range set forth in the specification in terms of
the operability of appellants’ process or of achieving the desired result, e.g., a
protective immune response. Cf. In re Wertheim, 541 F.2d 257, 265, 191 USPQ
90, 98 (CCPA 1976). Therefore, in our opinion, the examiner has not provided
the evidence necessary to support a finding that the broad range disclosed by
appellant does not also describe the narrow range now claimed.
Accordingly, we reverse the rejection of claims 54 and 55 under 35 U.S.C.
§ 112, first paragraph, as being based on a specification that fails to adequately
describe the claimed invention.
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