Appeal No. 2005-0147
Application No. 10/203,081
compounds having differing levels of structural similarity to a disclosed compound, but
the same function), the examiner should have addressed this correlation in her analysis
of whether the specification provides an adequate written description of the invention.
With respect to the claims directed to a viral reaper protein having at least 75%
sequence similarity to SEQ ID NO:2, the examiner appears to have answered this
question in the affirmative. See summary of the examiner’s Answer on page 5 above,
and the Answer, p. 3. Thus, we find that the examiner acknowledges that the
specification provides an adequate written description of the subject matter set forth in
claims 5, 6, 11-14 and 17-20. What about the written description in the specification of
viral reaper protein having at least 50% sequence similarity to SEQ ID NO:2? We are
not so sure, but the examiner’s rejection in the regard has been misdirected. To that
end, attention is directed to our comments which immediately follow and in the section
entitled “Other Issues,” below.
Second, in making the rejection based on the failure of the specification to
provide an adequate written description of the claimed invention, the examiner appears
to be considering the factors that are normally applied when making an enablement
determination. (See our discussion of enablement and the factors set forth by the court
in In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988), below). In
fact, it is difficult to discern a difference between the examiner’s written description and
enablement rejections. We point out that “‘the written description’ requirement is
separate and distinct from the enablement requirement,” thus, the criteria for satisfying
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