Appeal No. 2003-0835 Page 6
Application No. 09/419,371
The rejection also contends that “description of the instantly claimed
invention appears to also require not only the structure of the CREB/CREM/ATF-
1 family members but a description of those family members which are
associated with blocking of long term memory. Other than those limited
descriptions of dCREBa and dCREBb as activators and repressors, respectively,
the specification fails to provide the structural components of a
CREM/CREB/ATF-1 family member which provides any functional activity with
respect to learning and memory.” Id. at 5-6.
The rejection thus concludes that “the skilled artisan could not readily
recognize applicant’s possession of the claimed subject matter in particular as
the specification fails to describe any other family member or functional activity
other than for dCREB2a and dCREB2b. The single species cannot describe the
breadth of that described as a family member.” Id. at 6.
The examiner bears the burden of showing that the claims are not
adequately described. See In re Alton, 76 F.3d 1168, 1175, 37 USPQ2d 1578,
1583 (Fed. Cir. 1996). The disclosure as originally filed need not provide “in
haec verba support for the claimed subject matter at issue,” rather, the disclosure
should convey to one skilled in the art that the inventor had possession of the
invention at the time of filing. Purdue Pharma L.P. v. Faulding Pharmaceutical
Co., 230 F.3d 1320, 1323, 56 USPQ2d 1481, 1483 (Fed. Cir. 2000) (citations
omitted). We find that the examiner has not met the burden of demonstrating
that the claims are not adequately described.
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