Appeal No. 2002-0522 Page 4
Application No. 09/552,543
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. “One shows that one is ‘in
possession’ of the invention by describing the invention, with all its claimed
limitations, not that which makes it obvious. One does that by such descriptive
means as words, structures, figures, diagrams, formulas, etc., that fully set forth
the claimed invention.” Lockwood v. American Airlines Inc., 107 F.3d 1565,
1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997) (citation omitted, emphasis in
original).
In this case, we agree with the examiner that the instant specification does
not describe the composition of claim 23. The specification’s disclosure with
regard to endothelin antagonists is limited to those encompassed by formula I.
At no point does the specification state or even suggest that the disclosed
invention includes compositions comprising other endothelin antagonists. “It is
not necessary that the application describe the claim limitations exactly . . ., but
only so clearly that persons of ordinary skill in the art will recognize from the
disclosure that appellants invented [the claimed invention] including those
limitations.” In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976).
The specification here does not describe the composition of claim 23 in terms
that would lead persons of ordinary skill in the art to recognize that Appellants
invented compositions including any endothelin antagonist, including endothelin
antagonists not encompassed by formula I.
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