Appeal No. 2003-0936
Application No. 09/532,806
While it is not required that Appellant describe exactly
the subject matter claimed, 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. The Examiner maintains that
the instant disclosure does not 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 . . . .
The examiner’s criticism that the specification would not have
allowed persons skilled in the art to recognize what nucleotide
subfragments of SEQ ID NO:1 function as promoters is indistinct
from the concomitant criticism that the specification would not
have allowed persons skilled in the art to make and use the
nucleotide subfragments of SEQ ID NO:1 as promoters without undue
experimentation. However, Vas-Cath, Inc. v. Mahurkar, 935 F.2d
1555, 19 USPQ2d 1111 (Fed. Cir. 1991), instructs at 1562, 19 USPQ2d
at 1117:
This court in [In re ]Wilder[, 736 F.2d 1516, 1520,
222 USPQ 369, 372 (Fed. Cir. 1994), cert. denied,
469 U.S. 1209 (1985),] ( and the CCPA before it)
clearly recognized, and we hereby reaffirm, that
35 USC 112, first paragraph, requires a “written
description of the invention” which is separate and
distinct from the enablement requirement. The purpose
of the “written description” requirement is broader
than to merely explain how to “make and use”; the
applicant must also 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.
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