Appeal 2007-3668
Application 11/031,587
would have recognized that the disclosed invention was broader than a
comparison only with triethyl aluminum (Br. 4, Reply Br. 2).
We do not agree. It is well recognized that in the “unpredictable”
fields of science, it is appropriate to recognize the variability in the science
in determining the scope of the coverage to which the inventor is entitled.
Such a decision usually focuses on the exemplification in the specification.
See, e.g., Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968, 63
USPQ2d 1609, 1616 (Fed. Cir. 2002) (Even if a claim is supported by the
Specification, the language of the Specification, to the extent possible, must
describe the claimed invention so that one skilled in the art can recognize
what is claimed.); In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614,
1618 (Fed. Cir. 1989) (two chemical compounds were insufficient
description of subgenus); In re Smith, 458 F.2d 1389, 1394-95 173 USPQ
679, 683 (CCPA 1972) (disclosure of genus and one species was not
sufficient description of intermediate subgenus).
THE SUBJECT MATTER OF CLAIM 6.
The issue presented is: Has the Examiner established that the subject
matter of claim 6 does not meet the written description requirement of 35
U.S.C. § 112, first paragraph? We answer this question in the negative.
The Examiner contends that the Specification does not have written
description support for the subject matter of claim 6. Specifically, the
Examiner contends that there is no support in the Specification for the claim
limitation wherein the level of magnesium precursor is adapted to produce a
4
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