Appeal No. 2005-1745
Application No. 09/161,680
1572, 41 USPQ2d at 1966). As still further discussed above, it is not necessary for the
specification to describe the claimed invention ipsissimis verbis; all that is required is that
it reasonably convey to those skilled in the art that, as of the filing date sought, the
inventor was in possession of the claimed invention. Union Oil of California v. Atlantic
Richfield Co., 208 F.3d at 997, 54 USPQ2d at 1232; Vas-Cath Inc. v. Mahurkar, 935
F.2d at 1563-64, 19 USPQ2d at 1119; In re Gosteli, 872 F.2d at 1012, 10 USPQ2d at
1618; In re Edwards, 568 F.2d at 1351-52,196 USPQ at 467.
Here, as indicated above, we find that the specification, as originally filed, does
not provide any description of using the claimed method to generate a new catalytic
activity for an acylase. Accordingly, we find that claims 20 and 26 fail to comply with the
written description requirement of 35 U.S.C. § 112.
B. Claims 12-26
Claims 12-26 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.
As discussed above, the specification, as originally filed, does not provide an
adequate written description of a method “for generating a new catalytic activity in an
enzyme.”
Enzymes are proteins that act as catalysts. “The chemicals that undergo a
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