Appeal 2007-2681
Application 10/680,676
2. PRIOR ART
The Examiner does not rely on any references.
3. WRITTEN DESCRIPTION
Claims 1-14 stand rejected under 35 U.S.C. § 112, first paragraph, as
lacking an adequate written description in the Specification. The Examiner
acknowledges that the Specification describes the claimed method as applied
to selecting embryos for their germination potential, but not with respect to
other quantifiable characteristics:
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 in 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 5.) By “good” embryos, we understand the Examiner to mean
embryos having a morphology that indicates they are more likely to
germinate. (See id.: “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 5-6). The Examiner also argues that the
Specification does not adequately describe “how one could practice this
invention wherein a digital image of only ‘any portion thereof’ is captured
and a model is made” (id. at 5). Finally, the Examiner argues that the
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: September 9, 2013