Appeal No. 2005-2739 Page 4
Application No. 09/966,893
The examiner notes that the specification describes in vitro and in vivo experiments
involving “baculovirus-expressed neuraminidase and baculovirus-expressed PPCA”
(Examiner’s Answer, page 5), but argues that “the specification does not provide the
specific amino acid sequence and structure of the . . . protein[s]” (id.). Moreover, the
examiner argues that “[t]he specification fails to provide additional representative
proteins useful for treating any lysosomal storage disorder” (id.), although the claims
encompass “many proteins with widely differing structural, chemical, and physical
characteristics” and “many widely differing lysosomal storage disorders that have widely
differing etiologies based on their respective enzyme and/or protein deficiencies” (id.,
page 4).
We disagree with the examiner’s rationale and conclusion. “The ‘written
description’ requirement serves a teaching function, . . . in which the public is given
‘meaningful disclosure in exchange for being excluded from practicing the invention for a
limited period of time.’” University of Rochester v. G.D. Searle & Co., Inc., 358 F.3d 916,
922, 69 USPQ2d 1886, 1891 (Fed. Cir. 2004) (citation omitted). Another “purpose of the
‘written description’ requirement is . . . [to] convey with reasonable clarity to those skilled
in the art that, as of the filing date [ ], [the applicant] was in possession of the invention.”
Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir.
1991). See also Enzo Biochem Inc. v. Gen-Probe Inc., 296 F.3d 1316, 1329, 63
USPQ2d 1609, 1617 (Fed. Cir. 2002). The requirement is satisfied when the
specification “set[s] forth enough detail to allow a person of ordinary skill in the art to
understand what is claimed and to recognize that the inventor invented what is claimed.”
University of Rochester, 358 F.3d at 928, 69 USPQ2d at 1896. Whether or not a
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