Appeal No. 2004-1391 Page 3
Application No. 09/811,654
The examiner rejected claim 7 as lacking an adequate written description
in the specification. Claim 7 is directed to the method of claim 1, where the
tagatose administered to the patient is “D-tagatose, L-tagatose, or a mixture of
the two isomers.” The examiner concluded that the claims was not adequately
described, as we understand it, because the specification did not provide working
examples showing that either L-tagatose or a mixture of D- and L-tagatose was
effective to raise HDL levels. See the Examiner’s Answer, pages 3-4.
We will reverse this rejection. Whether a claimed method is operative
throughout its full scope may raise an issue of enablement, or possibly utility, but
it does not pose a problem of written description. Compare In re Wright, 999
F.2d 1557, 1561, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993) (“[T]o be enabling, the
specification of a patent must teach those skilled in the art how to make and use
the full scope of the claimed invention without ‘undue experimentation.’”) with
Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1330, 65 USPQ2d
1385, 1397 (Fed. Cir. 2003) (“The purpose of the written description requirement
is to prevent an applicant from later asserting that he invented that which he did
not.”).
As Appellant points out, the specification discloses that the claimed
method can be practiced by administering “D-tagatose, L-tagatose, or a mixture
of the two isomers.” Page 2. The examiner has cited no evidence showing that
this description would not have put those skilled in the art in possession of the
method recited in claim 7. The rejection under 35 U.S.C. § 112, first paragraph,
is reversed.
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007