Appeal No. 2002-1251 Page 4
Application No. 08/459,340
Examiner’s Answer, page 3. The examiner concluded that the claimed “subject
matter . . . was not described in the specification in such a way as to convey to
one skilled in the relevant art that the inventor(s), at the time the application was
filed, had possession of the claimed invention.” Id.
Appellants argue that
the claimed pharmaceutical compositions are fully described in the
specification such that one skilled in the art would recognize that
Appellants were in possession of the compositions at the time of
filing the application. . . . [T]he specification describes sufficient
relevant identifying characteristics of the compositions, including
the functional characteristics of the composition. In addition, the
specification provides a detailed drawing of the generic structural
and chemical formulas[,] further evidencing Appellants’ possession
of the claimed enzymatic nucleic acids.
Reply Brief, page 6.
“In order to satisfy the written description requirement, the disclosure as
originally filed does not have to provide in haec verba support for the claimed
subject matter at issue.” Purdue Pharma L.P. v. Faulding, Inc., 230 F.3d 1320,
1323, 56 USPQ2d 1481, 1483 (Fed. Cir. 2000). Nonetheless, the disclosure
must convey with reasonable clarity to those skilled in the art that the inventor
was in possession of the invention. See id.
We agree with Appellants that the examiner has not shown the instant
claims to lack an adequate written description in the specification. The claims
are directed to a pharmaceutical composition comprising an “enzymatic nucleic
acid molecule having a ribonucleotide at a catalytically critical site, at least one
deoxyribonucleotide and at least one nucleic acid analog,” together with a
pharmaceutically acceptable carrier. See claim 74.
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