Appeal No. 2006-0730 Page 4
Application No. 10/164,863
Notwithstanding the examiner’s limited reading of the definition, we find the
examiner skewed the definition of the term when he applied it in the rejection of
record. Specifically, the definition relied upon by the examiner states that a
symptom is “subjective evidence of disease or physical disturbance.” As applied
by the examiner, the “subjective evidence of disease . . .” becomes, “the
subjective sensations of an individual.” The latter is not what the definition states
– “sensations of an individual” are simply not part of the definition relied upon.
Further, the examiner finds that appellants’ specification focuses on
“objective signs of a disease (i.e. infertil[ity]) . . . .” There is no doubt that
appellants’ specification mentions infertility. Appellants’ claims, however, are
drawn to “[a] method for treating reproductive disorders involving abnormal levels
of lipids in a female mammal mediated by SR-BI activity. . . .” See e.g., claim 1.
The claim makes no mention of “infertility.” As we understand it, the claim
language falls directly into the second definition of the term “symptom” as it
appears on the online version of the Merriam-Webster’s dictionary as cited by the
examiner on page 2 of the Answer. Specifically, the definition of symptom as
being “something that indicates the existence of something else”, e.g., abnormal
levels of lipids in a female mammal mediated by SR-BI activity, indicating the
existence of a reproductive disorder.
“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). Adequate written description
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