Appeal No. 2005-1745
Application No. 09/161,680
1327(“in some cases . . . claim construction . . . involves little more than the application
of the widely accepted meaning of commonly understood words”).
The term “acylase,” however, stands on a different footing. In this regard, we
note that the appellant does not contest the examiner’s argument with respect to this
term. Usually, findings of the examiner which are not challenged are accepted as fact.
See, In re Kunzmann, 326 F.2d 424, 425 n. 3, 140 USPQ 235, 236 n. 3 (CCPA 1964).
However, in this case, we find that the problem is not one of indefiniteness, but rather
one of lack written descriptive support in the specification, as originally filed.
Accordingly, we have set forth a new ground of rejection pursuant to 37 C.F.R. §
41.50(b), below.
In view of the foregoing, Rejection I is reversed.
Rejection II
The examiner argues that the specification disclosure of a single mutated
enzyme does not provide written descriptive support for the claimed genus of
“generating new enzymes using any enzyme and any substrate to produce a new
enzyme (mutated with respect to the original enzyme) with altered substrate specificity
relative to the original . . . “because no correlation between the structures and functions
of the reagents used in the methods is described”. Answer, p. 4.
To satisfy the written description requirement, the inventor “must . . . convey with
reasonable clarity to those skilled in the art that, as of the filing date sought, he or she
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