Appeal No. 2002-0522 Page 3
Application No. 09/552,543
synthetase inhibitors; bile acid sequestrants . . .; calcium channel blockers;
potassium channel activators; beta-adrenergic agents; antiarrhythmic agents;
diuretics . . .; and thrombolytic agents.” Page 10, lines 4-22. All of the original
claims were directed to the compounds of formula I and methods of using these
compounds.
Discussion
Claim 23 is directed to a pharmaceutical composition comprising “at least
one endothelin antagonist” in combination with one of the therapeutic agents
listed on page 10 of the specification.1 Claim 23 is not limited to a composition
comprising the endothelin antagonist of the specification’s formula 1.
The examiner rejected the claims as lacking an adequate written
description in the specification. The examiner noted that the
specification only describes a pharmaceutical composition
comprising an endothelin antagonist of the formula I in combination
with at least one additional therapeutic agent. . . . The specification
does not name or give the structure of what endothelin antagonists
are contemplated except for the compounds of the formula I.
Examiner’s Answer, page 4 (emphasis in original).
“The purpose of the written description requirement is to prevent an
applicant from later asserting that he invented that which he did not.” Amgen,
Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1330, 65 USPQ2d 1385,
1397 (Fed. Cir. 2003). “In order to satisfy the written description requirement, the
disclosure as originally filed does not have to provide in haec verba support for
1 The claims stand or fall together. Appeal Brief, page 2. Therefore, claims 24, 26, and 27 stand
or fall with claim 23.
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