Ex Parte Dewis et al - Page 5

                  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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