Appeal No. 2002-1251 Page 5
Application No. 08/459,340
The specification, in turn, describes a pharmaceutical composition
“includ[ing] at least one nucleozyme and a pharmaceutically acceptable carrier.”
Page 6. The specification describes nucleozymes as “ribozyme like molecules
. . . [that] have ribonucleotides or nucleic acid analogues (hereinafter NAAs) at
catalytically critical sites and NAAs or deoxyribonucleotides at non-catalytically
critical sites. The preferred nucleozymes have ribonucleotides at catalytically
critical sites.” Page 3. Thus, the specification describes the claimed
compositions, albeit not quite in ipsis verbis.
The examiner does not seem to dispute that the specification describes, in
words, the claimed composition. Rather, his position seems to be that the
description is inadequate because it did not show that Appellants were “in
possession” of a working, pharmaceutical composition. However, the
“possession” test set out in the case law does not require actual, physical
possession of the later-claimed product. See Lockwood v. American Airlines
Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997): “One
shows that one is ‘in possession’ of the invention by describing the invention,
with all its claimed limitations. . . . One does that by such descriptive means as
words, structures, figures, diagrams, formulas, etc., that fully set forth the claimed
invention.” (Citation and emphasis omitted.) “Put another way, one skilled in the
art, reading the original disclosure, must immediately discern the limitation[s] at
issue in the claims.” Purdue Pharma L.P. v. Faulding, Inc., 230 F.3d 1320, 1323,
56 USPQ2d 1481, 1483 (Fed. Cir. 2000).
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