Appeal No. 2005-2381 Page 3
Application No. 09/944,209
preferentially an essential amino acid.’ In further limiting ‘amino acids,’ this passage
does not support the limitation of all α-amino acids. The description supports only the
further limitation of ‘essential amino acids.’” Examiner’s Answer, page 3. Appellants
argue that the quoted passage from the specification supports the disputed limitation, as
do (among other parts) Examples 1 and 2. Appeal Brief, page 4.
The examiner
“bears the initial burden . . . of presenting a prima facie case of
unpatentability.” In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443,
1444 (Fed. Cir. 1992). Insofar as the written description requirement is
concerned, that burden is discharged by “presenting evidence or reasons
why persons skilled in the art would not recognize in the disclosure a
description of the invention defined by the claims.” . . . If . . . the
specification contains a description of the claimed invention, albeit not in
ipsis verbis (in the identical words), then the examiner . . ., in order to
meet the burden of proof, must provide reasons why one of ordinary skill
in the art would not consider the description sufficient.
In re Alton, 76 F.3d 1168, 1175, 37 USPQ2d 1578, 1583 (Fed. Cir. 1996).
“In order to satisfy the written description requirement, the disclosure as originally
filed does not have to provide in haec verba support for the claimed subject matter at
issue.” Purdue Pharma L.P. v. Faulding, Inc., 230 F.3d 1320, 1323, 56 USPQ2d 1481,
1483 (Fed. Cir. 2000). Nonetheless, the disclosure must convey with reasonable clarity
to those skilled in the art that the inventor was in possession of the invention. See id.
In this case, the examiner has found that the specification adequately describes
the genus of compounds where R3-NαH- is an amino acid. Examiner’s Answer, page 4
(“The examiner agrees that the genus of amino acids, per se, is disclosed.”). The
examiner has also found that the specification adequately describes the smaller genus
of compounds where R3-NαH- is an essential amino acid. Examiner’s Answer, page 3.
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