Appeal No. 2003-0998 Page 4
Application No. 08/676,143
“In order to satisfy the written description requirement, the disclosure as
originally filed does not have to provide in haec verba support for 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.
In this case, we agree with Appellants that the specification provides an
adequate description of the instant claims. As Appellants point out, the
specification provides working examples of synthetic receptors having oligomers
composed of three monomer subunits. It is true, as the examiner noted, that the
synthetic receptors shown in those examples both comprise polycyclic templates,
and therefore do not provide a literal description of receptors comprising three-
subunit oligomers and each of the possible templates recited in the claims.
However, “[i]t 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 processes including those
limitations.” In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976).
In this case, the specification adequately describes all of the limitations of
the instant claims, even if the specifically disclosed embodiments do not combine
all of those limitations in all possible combinations. The disclosure is adequate to
show that Appellants were in possession of the invention now claimed at the time
the application was filed. The rejection for inadequate written description is
reversed.
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