Appeal No. 2006-1517 Page 8
Application No. 09/976,423
that can be printed for the clinician . . . or displayed to the clinician on a computer
monitor.”
In our view, these disclosures reasonably support the concept of combining
reagents for detecting variant alleles with a computer program to analyze data indicating
the presence or absence of such variant alleles. Adequate written description does not
require literal support in the specification: “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 requires only a disclosure that conveys with reasonable clarity to those
skilled in the art that the inventor was in possession of the invention. See id.
In this case, we conclude that the examiner has not adequately explained why
the description provided by the specification would be considered inadequate, by those
skilled in the art, to show possession of the instanty claimed kit. We therefore reverse
the rejection based on the first paragraph of 35 U.S.C. § 112.
3. Anticipation
The examiner rejected claims 72-105 under 35 U.S.C. § 102(b) as anticipated by
Applied Biosystems,1 and rejected claims 106 and 107 as anticipated by Perkin Elmer.2
With regard to Applied Biosystems, the examiner reasoned that
Applied Biosystems provides several products which are packaged for
distribution, kits, which allow for detecting the presence of variant alleles of
two or more genes. Applied Biosystems products for sale include: a DNA
analysis system; software for genetic analysis; . . . PRISM Ready reaction
1 Sales catalog of Applied Biosystems, Inc., pp. 135-157 and 160-164 (1993)
2 PCR Systems, Reagents & Consumables catalog, Perkin Elmer, pp. 15-18 (1995)
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