Appeal No. 2004-2138 Page 7
Application No. 08/765,324
Appeal Brief, page 6. The examiner did not adequately rebut these arguments.
The examiner also objected to the claims’ recitation of “solubiliz[ation] with a
reducing or denaturing agent.” See the Examiner’s Answer, page 8: “The [relevant]
passage [in the specification] does not specify how the ApoB-100 was solubilized and
thus the amendment to provide solubilization with a reducing or denaturing agent
provides a new subgenus of agents that is not supported by the original written
description.”
We do not agree with the examiner’s reasoning. Whether a specification
adequately describes a later-claimed invention is determined from the viewpoint of
those of skill in the art. See, e.g., Eiselstein v. Frank, 52 F.3d 1035, 1039, 34 USPQ2d
1467, 1470 (Fed. Cir. 1995) (“The test is whether the disclosure of the application relied
upon reasonably conveys to a person skilled in the art that the inventor had possession
of the claimed subject matter at the time of the earlier filing date.”). Here, the
specification cites the Lee reference as the basis of the protocol used to solubilize Apo
B-100. In addition, the examiner has provided no basis for concluding that those skilled
in the art would not have been aware of reducing and denaturing agents, other than
those used by Lee, that were commonly used to solubilize proteins. Thus, the examiner
has not carried her burden of showing that did not convey possession of this aspect of
the method now claimed to a person of skill in the art.
The same is true of the examiner’s concern regarding “generic means of removal
of all self-aggregated and degraded material.” Examiner’s Answer, page 6. The
specification describes purification by gel electrophoresis, Lee describes purification by
gel filtration chromatography (page 136), and the examiner has provided no basis for
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