Appeal No. 2003-0897 Page 5
Application No. 09/640,796
On consideration of the record, including the above-listed materials, we reverse
the examiner's rejection under 35 U.S.C. § 112, first paragraph.
Discussion
Initially, we note that claim 1 before us was introduced in the record by way of
preliminary amendment received August 18, 2000, which is the filing date of the instant
application. As best we can judge, however, applicants have not submitted a
supplemental oath or declaration referring to both the application and the preliminary
amendment. Nor has the examiner determined whether applicants' preliminary
amendment is considered part of the specification as filed. See MPEP § 608.04(b). On
these facts, we have proceeded as though the preliminary amendment received August
18, 2000, is not part of the specification as filed.
The question here is whether applicants run afoul of the written description
requirement of 35 U.S.C. § 112, first paragraph, by omitting from their claims the step of
converting a dialdehyde having formula (2) into its corresponding acetal-protected
aldehyde having formula (3). We answer that question in the negative.
In their specification, as filed, applicants describe the step of converting acetal-
protected aldehyde having formula (3) into its corresponding aminonitrile having formula
(4); converting the aminonitrile into its corresponding amino acid amide having formula
(5); subjecting the amino acid amide to enzymatic, enantioselective hydrolysis; and
isolating the (S)-amino acid having formula (1). In fact, it is not disputed that
applicants, in their original specification, literally describe each step of the multi-step
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