Appeal No. 2003-0936
Application No. 09/532,806
examiner argues that “Claim 1 encompasses every subfragment of SEQ
ID NO:1 that is between 95 and 3536 contiguous bases long and that
has promoter function” (EA 5; emphasis added). According to the
examiner, “the description must allow those skilled in the art to
recognize what regions of SEQ ID NO:1 would need to be retained in
its subfragments such that the subfragments could reasonably be
expected to retain promoter function” (EA 6).
As we understand the rejection, the examiner concedes that
appellants’ specification describes every subfragment claimed which
can function as a promoter. However, that description does not
satisfy the written description requirement of 35 U.S.C. § 112,
first paragraph, because the subfragments of SEQ ID NO:1 between
95 and 3536 contiguous bases in length that can function as a
promoter are not distinguished from the subfragments of SEQ ID NO:1
between 95 and 3536 contiguous bases in length that cannot function
as a promoter. The problem with the examiner’s position is that it
confuses the written description requirement of 35 U.S.C. § 112,
first paragraph, with the enablement requirement of 35 U.S.C.
§ 112, first paragraph. For example, in support of the written
description requirement of 35 U.S.C. § 112, first paragraph, the
examiner states (EA 5-6)(emphasis added):
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