Appeal No. 2002-1545 Page 8
Application No. 08/949,757
Revised Brief on Appeal, pages 8-9. The rejection, however, does not
specifically address this guidance provided by the specification and why it fails to
enable the antigen as claimed in claim 1. Therefore, the rejection under 35
U.S.C. § 112, first paragraph, on the grounds that the specification fails to enable
the full scope of the claims, is reversed.
Turning next to the rejection under 35 U.S.C. § 112, first paragraph, lack
of adequate written description, because the examiner failed to separate the
rejection from the enablement rejection, it is unclear exactly what the position of
the examiner is. To the best of our understanding, however, the examiner is
concerned that the specification does not describe the structure of the claimed
antigen.
In Enzo Biochem, Inc. v. Gen-Probe Inc., 296 F.3d 1316, 63 USPQ2d
1602 (Fed. Cir. 2002), the court adopted a portion of the Guidelines proffered by
the United States Patent and Trademark Office (USPTO). The court stated that:
The written description requirement can be met by “showing that an
invention is complete by disclosure of sufficiently detailed, relevant
identifying characteristics . . . i.e., complete or partial structure,
other physical and/or chemical properties, functional characteristics
when coupled with a known or disclosed correlation between
function and structure, or some combination of characteristics.
Enzo Biochem, 296 F.3d at 1324, 63 USPQ2d at 1613 (citations omitted).
In this case, as set forth above with respect to the enablement rejection,
the specification provides, inter alia, the ATCC Number for the deposited strain,
the method of isolating the antigen, the sugar composition of the isolated
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