Appeal 2007-2517
Application 10/311,196
aspect of the enablement requirement of 35 U.S.C. § 112, first paragraph. In
re Fouche, 439 F.2d 1237, 1243, 169 USPQ 429, 434 (CCPA 1971) (If
“compositions are in fact useless, appellant’s specification cannot have
taught how to use them.”); MPEP 2164.07 (Edition 8, August 2001; revised
August 2006). Because we have found that the claims do not meet the utility
requirement, we also are compelled to find that they do not meet the how to
use requirement of 35 U.S.C. § 112. We affirm the rejection of claim 1;
claims 2-7, 9, 11, 16, and 17 fall with claim 1 because they were not
separately argued.
Written description rejection
Claim 1-7, 9, 11, 16, and 17 stand rejected under § 112, first
paragraph, as failing to comply with the written description requirement for
the limitation of “a polypeptide comprising at least 500 continuous amino
acids of SEQ ID NO: 2, wherein the polypeptide has taste-specific receptor
activity” (Answer 6). The Examiner contends that the limitation is “new
matter,” not supported by the application as it was filed (Answer 6).
We have found that the Specification does not disclose that SEQ ID
NO: 2 is a polypeptide possessing taste-specific receptor activity. “To fulfill
the written description requirement, the patent specification ‘must clearly
allow persons of ordinary skill in the art to recognize that [the inventor]
invented what is claimed.’ In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d
1614, 1618 (Fed. Cir. 1989). An applicant complies with the written
description requirement ‘by describing the invention, with all its claimed
limitations.’ Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572, 41
USPQ2d 1961, 1966 (1997).” Gentry Gallery v. The Berkline Corp.,
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