Appeal No. 2007-0534
Application No. 10/463,016
DISCUSSION
35 U.S.C. § 112, first paragraph
Claims 1, 2, 5, 7-11, 15, 16, and 27-31 stand rejected under 35 U.S.C. § 112,
first paragraph for failing to comply with the written description requirement.
The examiner contends that the specification fails to provide an adequate written
description for a method of identifying a compound comprising steps that employ the
numerous recited generic components. The examiner argues that the claims and the
specification do not define structure for the "unnamed" first and second fusion proteins.
Answer, page 3. The examiner further argues that a "laundry list disclosure of every
possible moiety does not constitute a written description of every species in a genus
because it would not reasonably lead those skilled in the art to any particular species."
Answer, pages 3-4.
The appellants contend that the "function of the binding molecules is simply to
bind to one another" and that there are "numerous pairs of binding molecules known in
the art, of which several representative examples are provided in the specification."
Brief, page 11. The Appellants conclude that "given the nature of the invention, the
state of the art and the description provided by the specification of both a genus and
numerous examples . . . the Examiner has not met…. [the] burden to show lack of
description of an original claim." Brief, pages 11-12.
It is well settled that written description is a question of fact, judged from the
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