Appeal No. 2005-1745
Application No. 09/161,680
A. Claims 20 and 26
Claims 20 and 26 are rejected under 35 U.S.C. § 112, first paragraph, as
containing subject matter which was not described in the specification in such a way as
to reasonably convey to one skilled in the relevant art that the inventors had possession
of the claimed invention at the time the application was filed.
We point out that claims 20 and 26 were added to the specification by amendment
filed June 10, 2002, and September 16, 2003 (entered on November 6, 2003),
respectively. The claims are directed to a group of enzymes which includes, inter alia,
acylase. However, we do not find, and the appellants have not pointed out, any
section(s) in the specification, as originally filed, which provide written descriptive support
for this type of enzyme.
As discussed above, when new matter is added to the claims, the proper course
of action is to reject said claims for failing to satisfy the written description requirement of
§112, first paragraph. In re Rasmussen, 650 F.2d at 1214, 211 USPQ at 326. As further
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); and “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 at
17
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