Appeal No. 2003-1722 Page 4
Application No. 09/041,343
“Appellants’ claims, in fact, present a precise definition by structure for the
claimed invention.” Id., page 9.
We agree with Appellants. “The function of the description requirement is
to ensure that the inventor had possession of, as of the filing date of the
application relied upon, the specific subject matter later claimed by him. . . . It is
not necessary that the application describe the claim limitations exactly, but only
so clearly that one having ordinary skill in the pertinent art would recognize from
the disclosure that appellants invented processes including those limitations.”
In re Herschler, 591 F.2d 693, 700, 200 USPQ 711, 717 (CCPA 1979), citations
omitted. In this case, although the specification exemplifies only a couple of
compounds within the scope of the instant claims, the broader disclosure is
adequate to show that Appellants were in possession of the genus of compounds
now claimed. See, e.g., the passages cited by Appellants in the Appeal Brief.
We also agree with Appellants that the examiner’s reliance on Lilly was
inappropriate. The claims in Lilly were to a chemical compound (cDNA encoding
human insulin), yet neither the claims nor the specification defined the structure
of the claimed compound. See 119 F.3d at 1567, 43 USPQ2d at 1404-05 (“[T]he
definition of the claimed microorganism is one that requires human insulin-
encoding cDNA. . . . [T]here is no further information in the patent pertaining to
that cDNA’s relevant structural or physical characteristics; in other words, it thus
does not describe human insulin cDNA.”). Here, by contrast, the claims define
the claimed compounds in terms of the structure of their component moieties,
and the specification describes the moieties recited in the claims. Thus, this
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007