Appeal 2007-1610
Application 10/955,833
Written description rejection
Claims 7-12 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. The Examiner
contends that the phrase “provided that the ethyl 3-mercaptobutyrate is not
part of a naturally occurring mixture of compounds or part of a synthetic
mixture of compounds which is the same as the naturally occurring mixture”
of compounds is “new matter” to the application because it is not supported
in the Specification as originally filed (Answer 13). “[N]owhere in the
written description is language reflecting the present form of claim 7 found”
(Final Office Action 9).
“The purpose of the written description requirement is to prevent an
applicant from later asserting that he invented that which he did not; the
applicant for a patent is therefore required ‘to recount his invention in such
detail that his future claims can be determined to be encompassed within his
original creation.’” Amgen Inc. v. Hoechst Marion Roussel Inc., 314 F.3d
1313, 1330 [65 USPQ2d 1385] (Fed. Cir. 2003) (citing Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1561 [19 USPQ2d 1111] (Fed. Cir. 1991)).
While there is no requirement that the claimed invention be described in the
identical wording that was used in the Specification, there must be sufficient
disclosure to show one of skill in this art that the inventor “invented what is
claimed.” See Union Oil Co. of California v. Atlantic Richfield Co., 208 F.3d
989, 997, 54 USPQ2d 1227, 1235 (Fed. Cir. 2000).
According to the Specification, Appellants discovered that ethyl 3-
mercaptobutyrate “possesses unexpected flavor properties and imparts a
unique note to flavors” especially in foodstuffs (Spec. 5: 33-37). It is
present among “[a] relatively large number of components . . . identified in
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