Appeal No. 2006-0102 Page 6
Application No. 09/732,439
the genus” had not been provided); In re Gosteli, 872 F.2d 1008,
1012 (Fed.Cir.1989) (two chemical compounds were insufficient
*1359 description of subgenus); In re Smith, 59 C.C.P.A. 1025, 458
F.2d 1389, 1394-95 (1972) (disclosure of genus and one species
was not sufficient description of intermediate subgenus); In re
Grimme, 47 C.C.P.A. 785, 274 F.2d 949, 952 (1960) (disclosure of
single example and statement of scope sufficient disclosure of
subgenus).
On reflection, it is our opinion that our analysis, and the precedent relied
upon in the Decision is correct. For the reasons set forth above and in our
Decision, we are not persuaded by appellants’ arguments and reliance on
Capon. Accordingly, we reaffirm the rejection of claim 59 under the written
description provision of 35 U.S.C. § 112, first paragraph. Claims 60-63, 72, and
73 fall together with claim 59.
2. Should appellants’ request for rehearing be granted to review a reference that
is not of record in the case without a showing of good and sufficient reasons why
it was not earlier presented?
According to appellants “the [e]xaminer in this case was obligated to take
into account the level of skill and knowledge in the art.” Request, page 7.
Accordingly, appellants assert that the examiner should have considered
Williamson3, which was not made of record, “in addition to the numerous other
references cited in the [a]ppellants’ Appeal Brief . . . .” Id.
According to appellants (Request, page 8), “[t]he fact that a specific
reference was not of record does not change the fact that the reference was
known at the time of filing of the application. Therefore, the reference is pertinent
to an evaluation of the written description requirement and must be considered.”
3 Williamson et al. (Williamson), “Molecular Cloning and Evidence for Osmoregulation of the Δ1-
Pyrroline-5-Carboxylate Reductase (proC) Gene in Pea (Pisum sativum L.),” Plant Physiol., Vol.
100, pp. 1464-1470 (1992).
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