Appeal No. 2001-1651 Page 4
Application No. 09/238,972
invention guards against the inventor’s overreaching by insisting
that he recount his invention in such detail that his future claims
can be determined to be encompassed within his original
creation”). The possession test requires assessment from the
viewpoint of one of skill in the art. Id. at 1563-64 (“the applicant
must ... convey with reasonable clarity to those skilled in the art
that, as of the filing date sought, he or she was in possession of the
invention”) (emphasis in original); Union Oil Co. of Cal. v. Atlantic
Richfield Co., 208 F.3d 989, 997, 54 USPQ2d 1227, 1232 (Fed.
Cir. 2000) (“The written description requirement does not require
the applicant ‘to describe exactly the subject matter claimed,
[instead] the description must clearly allow persons of ordinary skill
in the art to recognize that [he or she] invented what is claimed’”)
(citation omitted). In Enzo [Biochem, Inc. v. Gen-Probe, Inc., 296
F.3d 1316, 63 USPQ2d 1609 (Fed. Cir. 2002)] and Amgen[ Inc. v.
Hoechst Marion Roussel Inc., 314 F.3d 1313, 1330, 65 USPQ2d
1385, 1397 (Fed. Cir. 2003)], the record showed that the
specification that taught one of skill in the art to make and use an
invention also convinced that artisan that the inventor possessed
the invention. Similarly in this case, the Lilly [Regents of the
University of California v. Eli Lilly & Co., 119 F.3d 1559, 43
USPQ2d 1398 (Fed. Cir. 1997)] disclosure rule does not require a
particular form of disclosure because one of skill could determine
from the specification that the inventor possessed the invention at
the time of filing.
On this record, the examiner bases his rejection on an incorrect
interpretation of the claimed invention. Contrary to the examiner’s assertion
(Answer, page 4), claims 3 and 16 do not require the inhibition of CAT2
translation. Instead, claim 16 is drawn to an antisense oligonucleotide directed
against CAT2 mRNA, and claim 3 is drawn to a composition comprising an
antisense oligonucleotide directed against CAT2 mRNA in a physiologically
acceptable carrier. We note that while a number of appellant’s claims are
directed at methods of using an antisense CAT2 oligonucleotide, none of these
claims are included in this rejection.
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