Appeal No. 2004-1259
Application No. 09/832,355
position.
While the examiner presents argument as to what is known in the art the
examiner has failed to provide evidence to support this statement. In re Lee, 277 F.3d
1338, 1343-1344, 61 USPQ2d 1430, 1433-1434 (Fed. Cir. 2002). In addition, the
examiner has failed to show with appropriate evidence that one of ordinary skill in the
art following the disclosure of the specification would be unable to obtain a fusion
protein having the claimed half-life or would have required undue experimentation to
obtain such a fusion protein. This aspect of rejection of the claims for lack of
enablement is reversed.
We remind the examiner, again, that “[t]he claimed subject matter need not be
described in haec verba to satisfy the description requirement. 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.” (citations omitted). See, e.g., In re
Herschler, 591 F.2d 693, 700, 200 USPQ 711, 717 (CCPA 1979). See also Purdue
Pharma L.P. v. Faulding, Inc., 230 F.3d 1320, 1323, 56 USPQ2d 1481, 1483 (Fed. Cir.
2000) (“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.”).
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