Appeal 2007-2681
Application 10/680,676
ordinarily skilled artisans would easily miscomprehend.” As in Amgen, the
Eli Lilly/Enzo Biochem test that the Examiner relies on is inapposite here.
The Examiner also argues that the claims lack adequate descriptive
support because the Specification does not describe how to use images only
of a “portions” of embryos to practice the claimed method or how to classify
embryos according to the properties recited in claim 14 using digital image
classification (Answer 5, 6).
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 when actual reduction to practice of an
invention is absent.”).
The instant Specification describes the claimed method in general
terms (e.g., Specification 4 and 18-20) and provides a working example of
using the method to classify embryos based on similarity to normal zygotic
embryos (id. at 27-32). 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 (i.e., portions of
embryos) can be used instead of images of whole embryos (id. at 7: 28-35).
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