Appeal No. 2005-1745
Application No. 09/161,680
“ensure that the scope of the right to exclude, as set forth in the claims does not
overreach the scope of the inventor’s contribution to the field as far as described in the
patent specification.” Reiffin v. Microsoft Corp., 214 F.3d at 1342, 54 USPQ2d at 1915.
As discussed above, to satisfy the written description requirement, the inventor “must
also convey with reasonable clarity to those skilled in the art that, as of the filing date
sought, he or she was in possession of the invention” [first emphasis added]. Vas-Cath
Inc. v. Mahurkar, 935 F.2d at 1563-64, 19 USPQ2d at 1117. “One shows that one is ‘in
possession’ of the invention by describing the invention, with all its claimed limitations...”
[emphases in original]). Lockwood v. American Airlines, 107 F.3d 1563, 1572, 41
USPQ2d 1961, 1966 (Fed. Cir. 1997).
Here, we point out that the claims, as originally filed, were directed to a “method
for altering the substrate specificity of enzymes.” In addition, the specification, as
originally filed, disclosed, inter alia:
Alteration of the substrate specificity in the novel method means that the enzymes
having been subjected to the method are able to convert substrates which they
were previously unable to convert, because the affinity of the enzyme for the
substrate was too low (= high KM) and/or the catalytic activity (= kcat) of the
enzymes was too low. In these cases, the ratio of kcat/ KM is zero or almost zero,
i.e.[,] catalysis does not occur. The alteration in the substrate specificity reduces
the KM or increases the kcat, or both, ie.[,] the ratio of kcat/ KM becomes greater
than zero. A catalytic reaction occurs. The enzyme converts the new substrate
after the mutagenesis. [Specification, p. 3, line 42- p. 4, line 5].
The examiner rejected the claims under 35 U.S.C. § 112, second paragraph, as
being indefinite, inter alia, in the recitation of “substrate specificity.” According to the
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