Appeal 2007-0862
Application 10/680,675
Appellant has demonstrated that one can take embryos which
are visually determined to be good (an old and well known
process), capture digital image data, and then take that data and
apply well known data processing algorithms to interpret the
data and produce a “classification model.” It is not in the
creation of a such a model that appellant has failed to
adequately describe or enable . . . their claimed invention but in
the application of said model. As such, the invention as a
whole has not been adequately described or enabled.
(Answer 4-5.) By “good” embryos, we understand the Examiner to mean
embryos having a morphology that indicates they are more likely to
germinate. (See id. at 5: “Using morphology as a basis for selecting
embryos is old and well known – embryos of a certain morphology tend to
germinate better than others.”).
The Examiner argues that the Specification does not adequately
describe the genus of “quantifiable characteristics” that could be selected for
using the claimed method (id. at 5). The Examiner also argues that the
Specification does not adequately describe “how one could practice this
invention wherein a digital image of only ‘embryo organs’ is captured and a
model is made” (id.). Finally, the Examiner argues that the description is
inadequate because “there is nothing to convey to one of skill in the art that
the properties in claim 14 could be reasonably predicted using a digital
image classification model (id. at 6).
We will reverse the rejection for lack of written description. “The
‘written description’ requirement . . . serves both to satisfy the inventor’s
obligation to disclose the technologic knowledge upon which the patent is
based, and to demonstrate that the patentee was in possession of the
invention that is claimed. . . . The descriptive text needed to meet these
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