Appeal No. 2005-1383
Application No. 09/364,847
directed to an invention which is broader than that which is described in the
specification. This analysis is improper. We remind the examiner that written
description is determined from the perspective of what the specification conveys to one
skilled in the art. In re GPAC Inc., 57 F.3d 1573, 1579, 35 USPQ2d 1116, 1121 (Fed.
Cir. 1995); Vas-Cath Inc. v. Mahurkar, 935 F.2d at 1563-64. Thus, the specification
need not always spell out every detail; only enough “to convince a person of skill in the
art that the inventor possessed the invention and to enable such a person to make and
use the invention without undue experimentation.” LizardTech Inc., v. Earth Resource
Mapping, Inc., 424 F.3d 1336, 1344-45, 76 USPQ2d 1724, 1732 (Fed. Cir. 2005).
The present invention is not about novel enzymes; it is about making fusion
proteins (or protein fusions) which comprise known enzymes. In this regard, we direct
attention to the examiner’s acquiescence to the appellants’ argument that the proteins,
and genes which encode them, are known and publicly available. Answer, pp. 2-3;
Brief, pp. 6-7. We point out that the examiner appears to have agreed with the
appellants that pages 8-10 of the specification, pages 4-8 of the appellants’ response
mailed December 27, 2002 (entered January 2, 2003), and the Medline database1
demonstrate that given the homology between both the amino acid and nucleotide
sequences of the enzymes in each of the claimed classes, one skilled in the art could
readily obtain the enzymes from various species. Answer, p. 3; Brief, p. 7. That is, in
1 It is not clear to us on what “Medline database” the appellants are relying. We find no
exhibits in the file which support this argument. Accordingly, at least with respect to the
“Medline database,” we find that the appellants are relying only on argument of counsel.
We point out that argument of counsel cannot take the place of objective evidence. In
re Payne, 606 F.2d 303, 315, 203 USPQ 245, 256 (CCPA 1979); In re Lindner, 457
F.2d 506, 508, 173 USPQ 356, 358 (CCPA 1971). Thus, we accord the argument in
this regard little, or no, evidentiary weight.
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