Appeal 2007-0862
Application 10/680,675
In a nutshell, the Examiner’s reasoning seems to be that the
Specification does not describe these aspects of the claims because it does
not provide any working examples showing classification based on embryo
organs or classification with respect to the properties recited in claim 14.
Lack of working examples, however, is not an adequate basis for a written
description rejection. See Falkner v. Inglis, 448 F.3d 1357, 1366, 79
USPQ2d 1001, 1007 (Fed. Cir. 2006) (“[E]xamples are not necessary to
support the adequacy of a written description[;] . . . the written description
standard may be met . . . even where actual reduction to practice of an
invention is absent).
The instant Specification describes the claimed method in general
terms (e.g., Specification 3-4) and provides working examples of using the
method to classify embryos based on likelihood to germinate (id. at 13-42).
The Specification also states that the method can be used to classify embryos
based on any quality susceptible to quantification (id. at 8: 28-29), and that
images of embryo organs can be used instead of images of whole embryos
(id. at 7: 28-35).
We reverse the rejection of claims 1-14 for lack of adequate written
description because the Examiner has not adequately explained why the
Specification’s disclosure does not satisfy that requirement of 35 U.S.C.
§ 112, first paragraph. Whether it satisfies the enablement requirement of
the same paragraph is a separate issue, to which we now turn.
3. ENABLEMENT
Claims 1-14 also stand rejected under 35 U.S.C. § 112, first
paragraph, as nonenabled. The Examiner relies in part on the same
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