Appeal No. 2006-0102 Page 13
Application No. 09/732,439
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 specification satisfies the requirement is a question of
fact, which must be resolved on a case-by-case basis (Vas-Cath, 935 F.2d at
1562-63, 19 USPQ2d at 1116).
On this record, we agree with the examiner that appellants= disclosure
does not convey with reasonable clarity that, as of the filing date, appellants were
in possession of a genus of DNA segments that encode an enzyme which
catalyzes the synthesis of the osmoprotectant proline, and would be capable of
being “expressed in a plant in an amount effective to confer tolerance or
resistance to a reduction in water availability” as encompassed by claim 59. At
best, appellants have established that two such genes, Δ1-pyrroline-5-
carboxylate synthetase and pyrroline-5-carboxylate reductase, were known in the
art at the time their invention was made. For the foregoing reasons, we agree
with the examiner that these two genes are not sufficient to describe the entire
genus encompassed by appellants’ claim.
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