Appeal 2007-3261
Application 09/854,802
Reply Brief, we affirm the rejection of claims 16-18 and 20-24 for lack of
written description.
Indefiniteness rejection
Claims 16-18 and 20-24 stand
rejected under 35 U.S.C. 112, second paragraph, as being
incomplete for omitting essential elements, such omission
amounting to a gap between the elements. See MPEP §
2172.01. The omitted elements are: (2) granulation, (4) addition
of the retardant excipients, lubricants, volume and gliding
excipients and (7) application of the melatonin solution under
pressure on the tablets for the formation of the “cortex”.
Specification discloses that stages (2), (4) and (7) are essential
for the preparation of the formulations which are the subject of
the invention (Pg. 8, lines 27, 28).
(Answer 6.)
We reverse this rejection. A specification must conclude with claims
“particularly pointing out and distinctly claiming the subject matter which
the applicant regards as his invention.” 35 U.S.C. § 112, ¶ 2 (2000). The
purpose of § 112, ¶ 2, is to “reasonably apprise those skilled in the art of the
scope of the invention.” Miles Labs., Inc. v. Shandon, Inc., 997 F.2d 870,
875, 27 USPQ2d 1123, 1126 (Fed. Cir. 1993). It is the purpose of the
written description, not the claims, to describe how to make and use the
invention. 35 U.S.C. § 112, ¶ 1 (2000). In this case, the claims are directed
to a composition of matter. It is not necessary under § 112, ¶ 2 to recite the
steps for making the composition in the claim; that function is the purpose of
the written description.
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