Appeal 2007-0852
Application 09/919,195
11). Appellants further argue that the Specification on page 12, line 30 to
page 13, line 8 incorporates by reference 4 patents, each of which describes
the synthesis of RAR ligands having antagonist and/or inverse agonist
activity. (Br. 11.)
The Appellants argue that "the specification provides one exemplary
compound of specific structure as a working example but the compounds
incorporated by reference [in the application] provide a multitude of
additional working examples." [Emphasis original.] (Br. 12.)
We find that Appellants have not described the subject matter of claim
13 in a manner to evidence that Appellants were in possession of the claimed
invention as of the filing date of the application. While Appellants rely on a
specific structure in the Specification as the claimed RARβ antagonist, the
only structure present in the Specification is found on page 16. The
compound is described on pages 15-16 of the Specification as having
"RARβ agonist activity." Appellants have provided a specific definition of
the term "antagonist" in the Specification and have not indicated how the
compound described in the Specification at pages 15-16 as an "agonist"
meets the definition of "antagonist", as claimed. Thus the Specification is
devoid of any structure of any compound which meets the definition of an
"antagonist" within the scope of claim 13.
The Specification also refers to certain patents which are
characterized as disclosing “ligands having antagonist and/or inverse agonist
activity” (Specification 13: 1-5). We also do not find this disclosure
sufficient to satisfy the written description requirement. The antagonist is
further defined in claim 13 as being “not specific to at least one other RAR
receptor subtype.” Appellants contend that the patents “list numerous
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